Senior Part-Time Trademark Counsel - Independent Contractor
Pomeroy Law Group PLLC
Company Description Pomeroy Law Group PLLC is a boutique law firm that delivers top-tier legal capabilities with a focus on practical solutions and timely results. The firm has particular strength in media, technology, and intellectual property transactions, providing sophisticated counsel on complex commercial and branding issues. With a strong emphasis on Internet law, Pomeroy Law Group PLLC supports clients navigating the digital economy and global marketplace. The firm serves both start-up and established organizations, helping them protect and grow their brands and innovations worldwide. Joining the firm offers experienced practitioners the opportunity to work closely with dynamic clients in fast-moving industries.
Role Description The Senior Trademark Counsel – Independent Contractor role is a part-time, remote position. The individual in this role will work with another trademark lawyer to help manage trademark portfolios, including clearance, filing strategies, prosecution, and maintenance across multiple jurisdictions. Day-to-day responsibilities include conducting and reviewing trademark searches, assessing risk, advising on brand protection and enforcement strategies, and preparing and responding to USPTO office actions. The role also involves drafting and negotiating trademark-related agreements, such as coexistence agreements, licenses, assignments, and consent letters, and coordinating with foreign counsel on global filings and disputes.
Qualifications
- Extensive experience in trademark law, including clearance, prosecution, portfolio management, and enforcement.
- Strong skills in risk assessment, and analysis of trademark registrability and infringement issues.
- Proficiency in drafting and negotiating trademark-related agreements (assignments, coexistence, consent and settlement agreements).
- Demonstrated ability to advise clients on brand strategy, protection in digital and global marketplaces, and alignment of legal advice with business objectives.
- Excellent written and verbal communication skills, including precise drafting and clear client-facing communication.
- J.D. from an accredited law school and admission to at least one U.S. state bar in good standing.
- Substantial prior experience (typically 7+ years) in trademark practice at a law firm, in-house, or a combination of both; experience with media and technology clients is a plus.
- Familiarity with international trademark systems and coordination with foreign counsel; experience with online brand protection, domain name disputes, and Internet law is beneficial.
- Commitment to ethical practice, client service excellence, and maintaining confidentiality and professionalism in all interactions.
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