Trade Mark Attorney

3 weeks ago

London, United Kingdom G2 Legal Full time

A top tier UK and European Intellectual Property firm has recently opened its doors for a new trade mark attorney. Our client prides themselves on their great culture, teamwork and perfect work/life balance. They are truly a leading firm when it comes to IP within Europe. They are looking for an ambitious individual that possess two years of post-qualification experience, with a particular expertise in trade mark prosecution work, along with contentious work also. This successful candidate will have a proven track record of managing numerous aspects of a brands portfolio: Litigious matters, management of overseas clients, trade mark application prosecution and online brand protection.

Responsibilities:
  • Conduct trade mark clearance searches and analyse search results to determine the availability of proposed trade marks.
  • Prepare and file trademark applications with the appropriate intellectual property offices.
  • Manage trade mark prosecution matters, including responding to office actions and communicating with trade mark examiners.
  • Draft and negotiate trade mark-related agreements, such as license agreements, coexistence agreements, and assignment agreements.
  • Provide legal advice and guidance on trade mark enforcement, infringement, and opposition matters.
  • Monitor and enforce trade mark rights, including conducting trademark watch services and initiating appropriate legal actions against infringers.
  • Collaborate with clients and internal stakeholders to develop trade mark strategies and provide advice on brand protection and management.
  • Maintain accurate and organized trade mark portfolios, including managing renewal deadlines, maintenance fees, and registrations.
Requirements:
  • Qualified attorney with a minimum of 2 years post-qualification experience (PQE) in trademark law.
  • Strong knowledge of trademark laws, regulations, and practices.
  • Experience in conducting trade mark clearance searches, analysing search reports, and preparing trademark applications.
  • Proficient in managing trademark prosecution matters, including responding to office actions and communicating with trademark examiners.
  • Ability to draft and negotiate trade mark-related agreements.
  • Experience in conducting trade mark opposition and cancellation proceedings.
  • Excellent analytical and problem-solving skills with attention to detail.
  • Strong communication and interpersonal skills to effectively interact with clients, colleagues, and external stakeholders.
  • Ability to work independently and manage multiple projects with competing deadlines.
  • Proficient in using trademark management software and databases.

Please mention IP Careers when applying to G2 Legal.

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