Trademark Counsel

Profile

A law firm in Austin 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 advice and guidance on trademark matters, including trademark clearance, prosecution, enforcement, and portfolio management.
• Conduct trademark searches and analyze search results to assess trademark availability and potential risks.
• Prepare and file trademark applications with the United States Patent and Trademark Office (USPTO) and other trademark offices worldwide.
• Draft and negotiate trademark licenses, assignments, and other agreements related to trademark rights.
• Conduct due diligence reviews for trademark matters in corporate transactions, including mergers and acquisitions.
• Provide legal opinions on trademark issues, including infringement, validity, and enforceability.
• Assist with trademark enforcement efforts, including cease and desist letters, opposition and cancellation proceedings, and litigation.
• Stay updated on changes in trademark laws and regulations and advise clients accordingly.
• Collaborate with attorneys and legal staff on intellectual property matters and client projects.
• Communicate effectively with clients, opposing counsel, and trademark office personnel.

Requirements:

• Extensive trademark experience, preferably in the energy, high-tech, or real estate industries.
• Experience in other intellectual property areas, including licensing, technology transactions, diligence, copyrights, opinions, and non-disclosure agreements.
• License to practice law in at least one U.S. jurisdiction, with Texas preferred.
• Strong analytical and problem-solving skills.
• Excellent written and verbal communication skills.
• Ability to work independently and collaboratively within a team.
• Attention to detail and accuracy.

Education:

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

Certifications:

License to practice law in at least one U.S. jurisdiction, with Texas preferred.

Skills:

• Extensive trademark experience.
• Knowledge of trademark laws and regulations.
• Strong analytical and problem-solving skills.
• Excellent written and verbal communication skills.
• Ability to manage multiple tasks and prioritize deadlines.
• Attention to detail and accuracy.
• Strong client service orientation.

Company info

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