Overview
The organization is seeking a Trademark Counsel to join its Intellectual Property team on a temporary contract basis.
This is a remote role, typically requiring 40 hours per week, working in Pacific Standard Time (PST). The assignment will run from mid-November 2026 to early-May 2027.
Responsibilities
This role supports the Associate General Counsel, IP, with protecting and enforcing a trademark portfolio, including day-to-day trademark protection and enforcement activities and advising on new trademark usage and related matters.
Key duties include:
- Performing and evaluating clearance searches on new trademarks, analyzing results, and providing risk assessments
- Advising on and, at times, drafting substantive responses to USPTO Office Actions (with trademark paralegals handling day-to-day prosecution)
- Independently handling day-to-day enforcement activities (priority investigations, cease and desist letters, negotiating with opposing counsel, drafting settlement agreements) for the USA and overseeing foreign counsel on the same
- Meeting opposition and other deadlines, including responding to Associate General Counsel, IP and foreign counsel
- Drafting initiating TTAB documents and overseeing foreign counsel’s equivalent documents while maintaining a consistent portrayal of companies and brands
- Supporting in-house and foreign litigation counsel throughout the pendency of oppositions, cancellations, civil lawsuits, or other proceedings
- Drafting, negotiating, and advising on trademark, copyright, and right of publicity related issues and agreements, including third-party licenses, intra-company licenses, consents, assignments, settlement agreements, co-branding, and others
Additional work may include special projects (such as due diligence in an M&A context).
Requirements
- Proven history of domestic trademark protection and enforcement (international experience also preferred)
- Experience with:
- Analysis of priority and rights
- Global trademark prosecution, opposition, and cancellation proceedings
- Trademark clearance searching, analyzing, and reporting
- Evaluating infringement cases in the pre-litigation stage
- Solid legal and risk-benefit analyses, including the ability to make difficult judgment calls clearly and concisely
- Minimum 4–7 years of solid experience with domestic trademark prosecution and enforcement (experience with copyright, patent and/or trade secret law a plus)
- JD from an accredited law school
- Active member in good standing with their state bar association
- Proven experience in risk assessments for the use and enforcement of trademarks across a variety of media and industries
- Experience drafting trademark agreements such as assignments and licenses
- Ability to work with paralegals to manage high-volume trademark deadlines
- Excellent analytical and creative problem-solving skills
- Exceptional written and verbal communication skills, including communicating with business stakeholders in a business-friendly manner
- Strong organizational skills and attention to detail, with strong follow-up
- Ability to work independently and take full responsibility for producing consistently complete and accurate work
- Proficient in USPTO and/or Saegis trademark searching; ability to quickly learn and utilize other computer applications
- Hardworking, detail-oriented, professional, and flexible with willingness to work on a broad variety of matters
Preferred Qualifications
- In-house trademark experience strongly preferred
- International trademark experience is a plus (not required)
- Experience with trademark issues for major consumer products is a plus
Compensation & Benefits
- Pay Range: $100.00 – $125.00 per hour
- Final compensation will be dependent upon skills and experience.
Location
- Remote
- Working hours: 40 hours per week, Pacific Standard Time (PST)
- Assignment dates: mid-November 2026 to early-May 2027