[Remote] IP/Trademark Attorney (PT/Contract) – Time-Sensitive
Note: The job is a remote job and is open to candidates in USA. Ellis Law Group is a recognized firm specializing in corporate law and startups, currently seeking an experienced IP attorney for a part-time/contract position. The role involves advising clients on trademark and copyright protection, drafting and negotiating license agreements, and offers flexibility in work schedule while allowing remote work from anywhere in the U.S.
Responsibilities
- Must have in-depth knowledge of and experience in trademark and copyright practice, including but not limited to:
- U.S. trademark counseling, clearance, and prosecution experience, including review and analysis of clearance searches, and preparing substantive responses to USPTO office actions
- Preparing and filing applications to register trademarks with the USPTO, including international registrations
- Experience and familiarity with copyright law, including copyright counseling and registration
- Conducting and analyzing preliminary and comprehensive trademark searches
- Conducting IP due diligence for complex business agreements and IP audits
- Handling IP infringement issues, including drafting and responding to cease-and-desist letters
- Assisting in the management of trademark portfolios, including multi-jurisdictional filing programs and US and foreign contentious matters
- Maintaining constant communication with clients and foreign counsel concerning clearance, filing instructions, office actions, potential obstacles and similar prosecution matters
- Must have experience drafting and negotiating license agreements. Experience with software, SaaS and other technology-enabled or related agreements would be a plus
- Should have the ability to apply licensing knowledge (including copyrights, trademarks, and patents) to various types of commercial arrangements, including but not limited to distribution agreements, collaboration agreements and financing agreements
- Knowledge of, and experience with, privacy law is a plus but is not a requirement
- Excellent written, verbal and interpersonal communications skills
- Ability to multitask, handle a busy schedule, communicate and work well in teams
- Must be authorized to work lawfully in the United States
Skills
- Must have a JD degree and be admitted to a state bar in at least one U.S. state
- Must have in-depth knowledge of and experience in trademark and copyright practice, including but not limited to:
- U.S. trademark counseling, clearance, and prosecution experience, including review and analysis of clearance searches, and preparing substantive responses to USPTO office actions
- Preparing and filing applications to register trademarks with the USPTO, including international registrations
- Experience and familiarity with copyright law, including copyright counseling and registration
- Conducting and analyzing preliminary and comprehensive trademark searches
- Conducting IP due diligence for complex business agreements and IP audits
- Handling IP infringement issues, including drafting and responding to cease-and-desist letters
- Assisting in the management of trademark portfolios, including multi-jurisdictional filing programs and US and foreign contentious matters
- Maintaining constant communication with clients and foreign counsel concerning clearance, filing instructions, office actions, potential obstacles and similar prosecution matters
- Must have experience drafting and negotiating license agreements
- Excellent written, verbal and interpersonal communications skills
- Ability to multitask, handle a busy schedule, communicate and work well in teams
- Must be authorized to work lawfully in the United States
- Experience with technology-related agreements and privacy matters would be a plus
- Experience with software, SaaS and other technology-enabled or related agreements would be a plus
- Knowledge of, and experience with, privacy law is a plus but is not a requirement
Company Overview
- Ellis Law Group is committed to achieving three important objectives for its clients: providing the highest quality legal advice vigorously representing their interests assisting them in fulfilling their goals as efficiently and cost-effectively as possible Educated in the nation’s finest universities and law schools and trained in major law firms, Ellis Law Group attorneys are well-versed in the intricacies of sophisticated business law. It was founded in 2011, and is headquartered in New York, NY, US, with a workforce of 11-50 employees. Its website is https://elg.law/.
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