Temporary Contract Trademark Counsel
About The Position
Roll Law Group PC, the "captive" law firm for The Wonderful Company and its subsidiaries, is seeking a skilled Trademark Counsel to join its Intellectual Property team on a temporary contract basis. The Temporary Contract Trademark Counsel will be responsible for handling day-to-day trademark protection and enforcement activities as well as advising the Associate General Counsel, IP on using new trademarks, use of marks in advertising, copyright, domain name, social media, and other related activities. This position involves supporting the Associate General Counsel, IP, in protecting and enforcing the trademark portfolio of The Wonderful Company and its affiliates. This is a remote contract 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.
Requirements
- Trademark practitioner with a proven history of domestic trademark protection and enforcement
- Experience with analysis of priority and rights
- Experience with global trademark prosecution, opposition and cancellation proceedings
- Experience with trademark clearance searching, analyzing and reporting
- Experience evaluating infringement cases in the pre-litigation stage
- Demonstrating solid legal and risk-benefit analyses with the ability to make tough judgement-call decisions in a clear and concise manner
- Minimum of 4-7 years of solid experience with domestic trademark prosecution and enforcement
- 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 in a variety of media and industries
- Experience drafting trademark agreements such as assignments and licenses
- Ability to work with paralegals to manage high volume of trademark deadlines
- Excellent analytical and creative problem-solving skills
- Exceptional written and verbal communication skills including the ability to communicate with business stakeholders in a business-friendly manner
- Excellent organizational skills and strong attention to detail with follow-up skills
- Excellent interpersonal skills even while under deadline pressure
- Ability to work and think with independence and be fully responsible for producing consistently complete and accurate work
- Proficient in USPTO and/or Saegis trademark searching and able to quickly learn and utilize other computer applications
- Hard working and detail-oriented, commitment to professionalism, with flexibility and willingness to work on a broad variety of matters
Nice To Haves
- International experience preferred
- Experience with copyright, patent and/or trade secret law a plus
- In-house trademark experience is strongly preferred
- International trademark experience is a plus, but not a requirement
- Experience with trademark issues for major consumer products is a plus
Responsibilities
- Performing and evaluating clearance searches on new trademarks, analyzing the results, and providing risk assessments
- Advising on and, at times, drafting substantive responses to USPTO Office Actions (Trademark Paralegal handles 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
- Being responsible for 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 the 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
- Handling day-to-day trademark protection and enforcement activities
- Advising the Associate General Counsel, IP on using new trademarks, use of marks in advertising, copyright, domain name, social media, and other related activities
Benefits
- Equal Opportunity employer
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What This Job Offers
Job Type
Full-time
Career Level
Senior
Education Level
Ph.D. or professional degree
