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Trademark Associate (Prosecution)
Position Overview: We are seeking a detail-oriented Trademark Associate (Prosecution) to manage trademark filings, prosecution, and portfolio maintenance for a diverse, global client base. The ideal candidate will lead trademark clearance searches, prepare and prosecute U.S. and international trademark applications (including Madrid and national filings), respond to USPTO office actions, handle oppositions/cancellations and TTAB matters, and advise clients on brand protection strategies. The Associate will collaborate with litigation and patent teams as needed, maintain docketing and annuity deadlines, and support prosecution-related client counseling and transactional work.
Key Responsibilities: Prepare, file, and prosecute U.S. and international trademark applications (including Madrid System and national phase filings).Draft and file responses to USPTO office actions, refusals, and non-final/ final correspondence; coordinate TTAB oppositions, petitions, and cancellations. Conduct trademark clearance and availability searches and prepare clearance opinions for clients across jurisdictions. Manage trademark portfolios including docketing, renewal/maintenance filings, recordals, assignments, and annuities to ensure timely prosecution and maintenance. Counsel clients on trademark strategy, selection, risk mitigation, licensing, and trademark-related aspects of transactions, including NDAs and confidentiality agreements. Maintain accurate prosecution records in trademark docketing systems and prepare regular portfolio and matter status reports for clients and partners. Participate in examiner interviews and hearings as required; prepare pre-hearing materials and support TTAB and administrative proceedings. Collaborate with patent, litigation, and licensing teams to coordinate cross-disciplinary IP strategies and support IP due diligence and transactional work.
Qualifications: J.D. or LL.B. from an accredited law school and admission to practice in at least one U.S. jurisdiction; USPTO registration (agent/attorney) is a plus.2+ years of experience in trademark prosecution and portfolio management (associate-level experience at a law firm or in-house counsel preferred).Proven ability to draft persuasive office action responses, oppositions, coexistence agreements, and licensing provisions; strong writing and oral advocacy skills. Experience with trademark clearance/searching and producing clearance or availability opinions; familiarity with trademark watch services and monitoring best practices. Ability to work collaboratively across IP practice groups and communicate technical or legal issues clearly to clients and colleagues. Preferred (but not required): background or exposure to patent prosecution and related skills such as patent drafting, office action responses, prior art searching, claim drafting, patentability and validity opinions, infringement analysis, FTO analyses, PCT filings, patent portfolio management, IP due diligence, and licensing/technology transfer.
Benefits: Vacation/PTOMedicalDentalVision 401kBonusRelocationTelecommute

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Level

Senior L5

Location

East Boston, MA

Occupation

Lawyers

Industry

All Other Legal Services

Posted

3 days ago

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