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National Association of REALTORS® · 14 hours ago

Senior Counsel, Trademark

Washington, DC

Contract

Hybrid

Mid, Senior Level

$160K/yr - $195K/yr

4+ years exp

The National Association of REALTORS® (NAR) is dedicated to supporting approximately 1.5 million REALTORS® in the real estate industry. They are seeking a Senior Counsel, Trademark Attorney to manage their trademark portfolio, provide legal counsel on intellectual property matters, and develop strategies for brand protection.

AssociationNon ProfitReal Estate

Comp. & Benefits

Responsibilities

Investigate infringement reports and draft cease-and-desist letters

Prepare and file UDRP complaints and pursue to resolution

Conduct clearance searches and provide risk assessments by analyzing those results to relay level of risk in adopting a proposed trademark to the appropriate business group

File and prosecute trademark applications and registrations with the United States Patent & Trademark Office

Manage trademark filings and oppositions

Pursue NAR objections to third party applications adverse to NAR

Identify and implement efforts to promote NAR’s marks

Draft educational materials and deliver training sessions

Draft and take appropriate responses to misuses of the REALTOR® trademark

Recommend appropriate action involving NAR’s trademark portfolio, brand protection efforts, and enforcement actions

Provide legal advice to NAR divisions and affiliates on organizational legal matters including but not limited to IP-related matters

Review marketing materials for IP compliance and other legal issues

Advise NAR and its stakeholders on timely and relevant risk mitigation matters impacting the organization and the real estate industry

Draft guidance to address recurring organizational legal and IP-related issues

Bring concerns to the attention of internal clients and suggest actions

Draft, review, and negotiate licenses, settlement agreements, contracts, NDAs and RFPs to which NAR or its affiliates or subsidiaries are parties

Advise staff and draft guidance to address recurring contract related issues

Recommend revisions to reduce liability exposure

Research and identify laws and regulations affecting NAR operations

Draft legal memoranda, articles, and risk management materials

Present educational programs to members and association executives

Draft legal memoranda, white papers, and briefs to support decisions or activities of NAR (or affiliate or subsidiary)

Suggest course of action to be taken; identify options and legal ramifications

Qualification

Juris DoctorTrademark prosecutionU.S. trademark lawTrademark docketing systemsLegal research platformsIntellectual property licensesDigital brand protectionCustomer relations skillsCurious mindsetExceptional communication skillsProject managementTeam player

Required

Juris Doctor

Must be currently admitted and maintain a license to practice law in good standing in the District of Columbia, or be eligible for admission as in-house counsel

At least 4- 7+ years of related legal experience as in-house counsel, or practicing at a law firm or government agency

Demonstrated experience with trademark prosecution, enforcement, and portfolio management; proficiency in conducting and analyzing trademark clearance searches

Deep understanding of U.S. trademark law and USPTO filing systems and procedures, familiarity with international trademark systems, search databases and tools

Demonstrated experience with digital/online brand protection and enforcement strategies, including familiarity with UDRP proceedings and domain name disputes

Experience drafting and negotiating intellectual property licenses and settlement agreements

Proficiency with trademark docketing systems, Microsoft Office Suite and legal research platforms (Westlaw, LexisNexis)

Hands-on experience managing litigation and related tasks

Significant experience and ability to draft, negotiate and review a wide variety of commercial agreements

Exceptional communication skills—verbal, written, and presentation to groups of varying sizes and seniority

Capable of successfully working on and completing multiple projects simultaneously with minimal supervision

Ability to influence, gain credibility and develop strong working relationships across the team, with business partners, and leaders and decision-makers across the organization

Highly organized, and excellent follow-up and follow-through skills

Results-oriented with high attention to detail, ability to multi-task, and meet deadlines in a dynamic, fast-paced team environment

Ability to think in innovative ways, solve problems and develop strategies that cut across multiple issue areas

A team player with a positive, collaborative approach, while able to work independently and take ownership of projects

Strong customer relations and interpersonal skills with a high level of response to all inquiries

A curious mindset, ability to learn new skills and “can-do” attitude

Ability to travel up to 10-20%

Preferred

Familiarity with real estate industry and association governance structures a plus

Experience in antitrust, data privacy or employment law a plus

Benefits

Health/dental/vision insurance

Company

National Association of REALTORS®

The National Association of REALTORS® (NAR) is America’s largest trade association, representing more than 1.5 million members involved in all aspects of the residential and commercial real estate industries.

Founded in 1908

Chicago, Illinois, USA

201-500 employees