Trademark Attorney

Title: Trademark Attorney

Department: Intellectual Property

Location: Rochester

Classification: Exempt

Job Type: Full-time M-F, 8:00 AM-5:00 PM

The following information provides an overview of the skills, qualities, and qualifications needed for this role.

Company Overview:

Woods Oviatt Gilman, LLP is a leading and reputable full-service law firm dedicated to providing exceptional legal services to our clients. With a team of highly skilled and experienced attorneys, we strive to deliver comprehensive and effective solutions to meet the diverse needs of our clients. Our headquarters is in Rochester, NY, with additional offices in Albany and Buffalo, NY.

We foster a collaborative and inclusive work environment where every team member is valued and respected. We encourage open communication, teamwork, and professional growth. Our firm promotes a healthy work-life balance and supports the well-being of our employees.

Position Summary:

We are seeking an experienced Trademark Attorney to join our Intellectual Property practice group. The role spans brand counseling and enforcement, USPTO prosecution, and domestic and international portfolio management. The ideal candidate brings deep trademark experience, strong client communication skills, and the judgment to manage matters independently.

Key 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.

Required Skills & Qualifications:

• 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.

Physical Demands:

The physical demands described here are representative of those that must be met by an employee to successfully perform the essential functions of this job. Reasonable accommodation may be made to enable individuals with disabilities to perform the essential functions.

• Employee is regularly required to stand, walk, use hands/fingers to type, hold, handle, or feel; and reach with hands and arms.
• Regularly required to talk or hear.
• Prolonged periods of sitting at a desk and working on a computer.
• The employee must occasionally lift and/or move up to 15 pounds.

Other Duties: Please note this job description is not designed to cover or contain a comprehensive listing of activities, duties, or responsibilities required of the employee for this role. It provides a snapshot of the core functions and responsibilities. All inquiries will be handled with the utmost confidentiality. The compensation range for this position is $120,000–$180,000 annually, plus bonus potential, representing our good faith and reasonable estimate of the potential compensation at the time of posting. Actual compensation will be determined based on various factors, including the candidate's qualifications, experience, skill set, and office location. Additionally, relocation assistance is available for qualified candidates.

Woods Oviatt Gilman LLP is an Equal Opportunity Employer. We value an open mind, dedication to work, and a collaborative spirit. We hire based on these qualities, a job’s requirements, our business needs, and an applicant’s qualifications. We do not tolerate discrimination or harassment of any kind—in the hiring process or in the workplace. We comply with the ADA and consider reasonable accommodation measures that may be necessary for eligible applicants/employees to perform essential functions. xrczosw We participate in E-Verify. We will provide the federal government with employees’ Form I-9 information to confirm authorization to work in the U.S. We will only use E-Verify once an employee has accepted a job offer and completed Form I-9.