Honigman is currently seeking a Trademark Staff Attorney for our Ann Arbor office who will utilize strong knowledge and understanding of various domestic and foreign trademark prosecution matters to coordinate and assist with U.S. and foreign trademark registration efforts. This position will be responsible for managing trademark portfolios, trademark clearance, US and foreign trademark prosecution, and US and foreign contentious matters. This includes multi-jurisdictional filing programs, constant communication with clients and foreign counsel concerning clearance, filing instructions, office actions, potential conflicts and similar prosecution matters. This position will use appropriate computer software applications proficiently to conduct and analyze preliminary searches, including on-line investigations, and assist with comprehensive searches and will assist with infringement and clearance investigations. In addition the position will handle all aspects of U.S. trademark prosecution, prepare Assignments of trademark registrations and applications and file same with USPTO and foreign offices. This positon will be depended on to quickly get up to speed on department processes and needs, as well as take initiative to follow-up and take necessary action.
• J.D. degree from an ABA-accredited institution
• Must be licensed Michigan attorney in good standing or have ability to waive into Michigan bar without examination;
• 4+ years of relevant experience in a Trademark prosecution, searching and enforcement;
• Proficient in Word, Excel, and an ability to quickly learn how to efficiently use other applications used by the department.
• Proficient in the use of the Internet for conducting research, including a strong knowledge of trademark clearance databases, as well as trademark investigations – online, by telephone and through investigations. Prefer experience with PATTSY (or an equivalent docketing software), Saegis, Lexis/Nexis, Westlaw, and similar research tools.
• Trademark search and clearance experience, both preliminary and comprehensive.
• On filing experience with the USPTO, WIPO and the US Copyright Office
• High level of communication skills requiring social sensitivity and in-depth knowledge of department procedures in order to communicate effectively with staff and management within and outside the department and external contacts, including clients, foreign associates and vendors.
• Ability to organize and prioritize numerous tasks and to complete them under significant time constraints.
• Ability to follow and convey instructions effectively with a high degree of courtesy and tact including ability to independently initiate follow-up.
• Must be a problem solver, willing to work and think with independence, handle confidential information with discretion, and accept responsibility for producing work that is consistently complete, timely, effective and accurate.
• Excellent organizational and analytical skills; detail oriented. Strong writing skills (a writing sample may be requested).
Expires on - 11/11/2018