Trademark Counsel

Profile

A law firm in Houston is seeking a Trademark Counsel with extensive trademark experience, preferably in the energy, high-tech, or real estate industries. The ideal candidate will also have experience in other intellectual property areas, including licensing, technology transactions, diligence, copyrights, opinions, and non-disclosure agreements. A license in at least one U.S. jurisdiction is required, with Texas preferred.

Duties:

• Provide legal counsel and strategic advice on trademark matters, including clearance, registration, enforcement, and portfolio management.
• Conduct comprehensive trademark searches and analyses to assess availability and potential risks.
• Draft and file trademark applications with the United States Patent and Trademark Office (USPTO) and other relevant authorities.
• Negotiate and draft trademark licenses, assignments, and other agreements related to trademark rights.
• Conduct due diligence reviews for trademark matters in corporate transactions, mergers, and acquisitions.
• Provide legal opinions and advice on trademark issues, including infringement, validity, and enforcement.
• Assist with trademark enforcement actions, including cease and desist letters, opposition proceedings, and litigation.
• Stay abreast of developments in trademark law and industry trends and advise clients accordingly.
• Collaborate with attorneys and support staff on intellectual property matters and client initiatives.
• Communicate effectively with clients, opposing counsel, and trademark office personnel.

Requirements:

• Extensive trademark experience, particularly in the energy, high-tech, or real estate sectors.
• Familiarity with other areas of intellectual property law, including licensing, technology transactions, diligence, copyrights, opinions, and non-disclosure agreements.
• Admission to the bar in at least one U.S. jurisdiction, with preference for Texas licensure.
• Strong analytical and problem-solving skills.
• Excellent written and verbal communication abilities.
• Ability to work autonomously and collaboratively within a team.
• Attention to detail and accuracy.

Education:

Juris Doctor (J.D.) degree from an accredited law school.

Certifications:

Admission to the Bar in at least one U.S. jurisdiction, with preference for Texas licensure.

Skills:

• Proficiency in trademark law and procedures.
• Strong analytical and problem-solving abilities.
• Excellent written and verbal communication skills.
• Ability to manage multiple projects and meet deadlines.
• Attention to detail and accuracy.
• Client-focused approach to legal practice.

Company info

BCG Attorney Search
10777 Westheimer, Suite 1100
Houston
Texas
United States 77042
Phone : (713) 270-1199
Fax : (213) 895-7306