Trademark Associate

About the role

Barnes & Thornburg LLP is seeking a driven Trademark associate to join their legal team at the Minneapolis office. The firm also maintains an Indianapolis location where this position could be based. This is a full-time role focused on trademark prosecution, portfolio management, and enforcement work for a diverse client base. The intellectual property group at Barnes & Thornburg is widely recognized and provides strategic guidance grounded in business understanding to both established global brands and new innovators. The successful candidate will handle a meaningful caseload and contribute to the firm's reputation for excellence in IP law.

Key facts

What you'll do

1. Conduct comprehensive trademark searches across multiple databases and assess whether proposed marks are clear for commercial use and registration purposes.

1. Prepare and file trademark applications with the United States Patent and Trademark Office, ensuring all required documentation is complete and accurate.

3. Manage ongoing trademark portfolios by tracking renewal deadlines, monitoring usage, and ensuring that all maintenance filings are submitted on time.

4. Represent clients in proceedings before the Trademark Trial and Appeal Board, including handling oppositions and cancellations with thorough legal arguments.

5. Draft cease-and-desist correspondence directed at parties allegedly infringing on client trademarks and respond to similar demands received from third parties.

6. Provide informed guidance on proper trademark usage, brand policing strategies, and long-term protection plans tailored to each client's business objectives.

7. Handle copyright-related matters and domain name disputes through formal UDRP proceedings, including preparation of complaints and responses.

8. Support trademark and copyright litigation activities as needed, assisting senior attorneys with document review and case preparation across various matters.

9. Collaborate closely with colleagues across multiple office locations to serve clients effectively in a team-based and cross-functional environment.

10. Advise clients on licensing agreements and other transactional aspects of trademark management, ensuring that contractual terms protect brand value.

11. Develop and implement brand protection strategies that address both domestic and international concerns for clients operating in global markets.

12. Communicate regularly with clients to provide status updates, manage expectations, and ensure that all trademark matters are handled promptly.

Requirements

1. Hold a Juris Doctor degree from a law school accredited by the American Bar Association as a minimum educational requirement.

2. Maintain bar membership that is active and in good standing in a relevant jurisdiction, with no disciplinary actions or outstanding issues.

3. Possess three to six years of substantive hands-on experience in trademark prosecution, portfolio management, and enforcement activities.

4. Have significant United States-based trademark experience, with international exposure considered a strong advantage for this position.

5. Demonstrate proficiency in performing trademark clearance searches and evaluating results carefully to identify potential conflicts and risks.

6. Show familiarity with TTAB procedures, including the preparation and filing of documents for oppositions, cancellations, and related proceedings.

7. Exhibit strong written and verbal communication skills along with proven abilities to build and maintain positive client relationships.

8. Display meticulous attention to detail and well-developed organizational capabilities that allow for the management of multiple concurrent matters.

9. Be capable of working independently on assigned tasks while also contributing effectively as part of a collaborative team environment.

10. Have a solid understanding of U.S. trademark law, including the Lanham Act and related statutory and regulatory frameworks.

Nice to have

1. Prior involvement in UDRP actions and other domain name dispute resolutions demonstrates relevant experience in this area of practice.

2. Experience with TTAB proceedings beyond basic oppositions and cancellations, including appeals and complex multi-party proceedings, is valued highly.

3. Background in trademark and copyright litigation at the trial or appellate level shows depth of legal knowledge and courtroom readiness.

4. Familiarity with handling counterfeiting matters and enforcement actions against trademark infringers reflects a practical understanding of brand protection.

5. Knowledge of licensing frameworks and brand protection programs across multiple industries indicates versatility and broad professional exposure.

Skills & tools

1. Working knowledge of subscription-based and free trademark searching databases and platforms, including both domestic and international resources.

2. Proficiency with USPTO filing systems and electronic submission tools, including the Trademark Electronic Application System and related platforms.

3. Ability to navigate TTAB electronic docketing and document management systems to track case progress and maintain organized records.

4. Familiarity with copyright registration processes and relevant office procedures, including the use of the Copyright Office electronic filing system.

5. Strong research capabilities using both legal databases such as Westlaw or LexisNexis and public record resources available online.

6. Comfort with managing multiple matters simultaneously across different practice areas, balancing competing priorities, and meeting firm deadlines consistently.

7. Experience with document management and case management software commonly used in legal practice settings for efficient workflow.

Practical notes

1. Barnes & Thornburg does not accept resumes submitted by external recruitment agencies or search firms for any position at the firm.

2. The firm will not pay fees to any recruiter or agency for assisting in the hiring process for this role.

3. The firm is committed to equal employment opportunity for all applicants and employees without regard to any protected characteristic.

4. Barnes & Thornburg complies fully with all applicable federal, state, and local anti-discrimination laws in every aspect of employment.

5. Candidates should expect to work both independently on assigned tasks and as part of a collaborative team across offices.

6. The firm values diversity and inclusion, recognizing that a wide range of perspectives strengthens the quality of legal services provided.