Trademark Prosecution Counsel

About the role

Whitecap Search is seeking a highly skilled trademark attorney for a temporary role within a prestigious law firm's trademark prosecution group. This engagement is expected to last approximately 6-9 months. The attorney must be admitted to the state they are working from, with the flexibility of not needing to reside in New Jersey, although it is considered a plus.

Responsibilities

• Support domestic and international trademark prosecution, brand clearance, registration, and enforcement.
• Counsel clients on trademark availability assessments and portfolio management.
• Clearance of marks globally and finding pathways to obtain registration.
• Provide strategic counsel on portfolio management.
• Support some large volume clients.
• Handle licensing, maintenance, and enforcement of trademarks and copyrights.
• Work with major consumer brands across various industries, advising on global portfolios.
• Counsel emerging companies on trademark clearance, selection, and brand strategy.
• Engage in online brand protection work including domain name dispute proceedings and responding to phishing attacks targeting clients' brands.
• Manage customs registrations and enforcement for global companies, coordinating across jurisdictions to intercept infringing goods.
• Safeguard the integrity of brands in the marketplace.
• Assist clients across various industries such as pharmaceutical, life sciences, animal health, tech, financial services, consumer products, and retail.
• Conduct intellectual property and technology due diligence evaluations.
• Negotiate key intellectual property terms and ancillary documents in fast-paced mergers, acquisitions, and financings.

Requirements

• Admitted to practice in the state of residence.
• Experience in trademark prosecution and portfolio management.
• Strong counseling skills on trademark clearance, selection, and brand strategy.
• Ability to handle high volume clients and complex trademark issues.
• Experience with online brand protection and enforcement strategies.
• Knowledge of customs registration processes and enforcement.
• Experience in negotiating intellectual property terms in mergers and acquisitions.

Qualifications

• Advertising work experience is a plus, including false advertising risk counseling and competitor challenge strategy.
• Familiarity with FTC and NAD frameworks for consumer brand guidance.