Attorney

Woods Oviatt Gilman•Rochester, NY

7d•Onsite

About The Position

Woods Oviatt Gilman, LLP is seeking an experienced Trademark Attorney to join their Intellectual Property practice group. This role involves brand counseling and enforcement, USPTO prosecution, and domestic and international portfolio management. The ideal candidate will possess extensive trademark experience, strong client communication abilities, and the judgment to manage cases independently. The firm is a leading full-service law firm with a headquarters in Rochester, NY, and additional offices in Albany and Buffalo, NY. They emphasize a collaborative, inclusive, and supportive work environment that values professional growth and work-life balance.

Requirements

JD from an accredited law school and admission to the New York State Bar.
6 or more years of trademark and related intellectual property experience, including USPTO prosecution and matters before the TTAB.
Strong analytical skills and attention to detail.
Excellent communication and interpersonal skills, with the ability to establish rapport with clients and colleagues.
An entrepreneurial mindset, with a proactive approach to client development and brand protection.

Responsibilities

Counsel clients on trademark selection, clearance, and brand strategy, including searches and registrability opinions.
Prepare and prosecute U.S. trademark applications before the USPTO, including office action responses.
Work closely with foreign trademark agents to handle reciprocal trademark work.
Run trademark watch and monitoring programs and advise on enforcement.
Draft and negotiate licensing, coexistence, assignment, and consent agreements.
Handle cease and desist demands and counsel on infringement, dilution, and unfair competition, including UDRP domain disputes and online brand enforcement.
Conduct trademark due diligence in mergers, acquisitions, and financing transactions.
Build and maintain client relationships and support the firm's IP practice.
Stay current on trademark and IP law through CLE and bar involvement such as INTA.