Brand Protection Administrator

About the role

The Brand Protection Administrator assists trademark attorneys in handling a variety of billable and operational projects or tasks related to worldwide trademark portfolios associated with clients' brands, as well as copyright matters, depending upon the practitioner and client needs. This position reports to the Practice Group Leader and receives daily supervision and assignments from practitioners in the practice group.

Responsibilities

• Trademark Administration: Perform all billable non-attorney tasks relating to U.S. and worldwide trademark applications and portfolios, including Madrid Protocol applications, foreign trademark applications, application filings, extensions, statements of use, registration maintenance and renewal, and recording assignments, security interests and releases. Summarize trademark office action issues in the USPTO, WIPO, and with foreign associates, and obtain attorney responses and direction for timely action. Conduct initial trademark searches using the USPTO, WIPO, and third-party search tools, and prepare draft search reports for attorney review. Assist with opposition, cancellation, and appeals filings before the TTAB. Assist with UDRP filings with WIPO and other arbitrators. Review and manage brand portfolio due dates, work with docketing staff to maintain, revise, and update the trademark docket, and ensure timely and prompt responses from attorneys and other internal team members. Prepare copyright applications. Prepare and send foreign associate correspondence regarding new applications, responses, renewals, and recording assignments, security interests and releases. Provide and maintain electronic and paper files, as well as review and approval of all docketed deadlines. Assist with investigation, research, USPTO informational searches, and internet searches, review documents, and summarize findings as directed. Assist attorneys with corporate due diligence including review of trademark portfolios, preparation and review of schedules, chain of title review and cleanup. Handle new client file intakes, and new counsel transfers. Assist with trademark litigation filings in federal and state courts (preferred, but not required).
• Docket Software Responsibilities: Learn and maintain complete knowledge of the patent and trademark docketing software program (Foundation IP), train staff, assist practitioners in the use of the docket system, and maintain updated procedures requested by practitioners regarding implementation of firm docketing policies.
• Document Organization: Photocopy, file, and search files for documents; prepare, index, and review documents for delivery, storage, and destruction.
• Other duties as assigned.

Essential Capabilities

• Strong oral and written communication
• Outstanding attention to detail
• Initiative
• Adaptability
• Dependability
• Flexibility
• Client service and teamwork orientation
• Independent judgment
• Ability to independently manage tasks and deadlines
• Ability to focus attention for long periods of time
• Work without direct supervision in a fast-paced environment

Essential Knowledge and Skills

• Strong aptitude for computer software application programs
• Working knowledge of applicable software programs for carrying out trademark and copyright duties, including word processing, spreadsheets, databases, trademark and copyright filing programs, online services, records management systems, and docketing programs (currently, we utilize Foundation IP docketing software)
• Competent use of the firm's timekeeping system to capture time for all billable tasks and to record disbursements
• Competent use of personal computers, printers, photocopiers, e-faxes, telephones, and other regular office equipment
• Experience with WIPO's Madrid filing system
• Curiosity and willingness to test drive firm-approved artificial intelligence solutions to drive efficiency and accuracy in the trademark prosecution practice

Physical and Mental Capabilities

• Able to enter computer data for long periods of time
• Adequate addition and subtraction skills
• Able to read and interpret information in printed, handwritten or computer form, instructions, legal correspondence, memoranda, forms, documents, reference publications, or reference books

Education & Experience

• High school degree or equivalent required
• College degree preferred
• Minimum of 5+ years’ relevant experience as a trademark paralegal, at least 2 of which should be at a major law firm
• Additional trademark prosecution, docketing, and international portfolio management experience is welcome

Normal Work Hours

This position is nonexempt and is eligible for overtime compensation. Normal work hours are between 8:30 a.m. and 5:00 p.m. Pacific Time (PT), regardless of remote work location. Occasional overtime may be necessary and may be on short notice.

How You Will Live Life Well at Stoel Rives

The pay range for this position is $73,000 - $123,000; however, the base compensation presented to a candidate may vary based on skills and overall experience. This salary range is based on market location. In addition to base compensation, Stoel Rives has a total rewards program that includes an annual discretionary bonus and rich benefits offerings. For example, our benefits offerings include paid family & medical leave, competitive PTO, and remote work options. We offer competitive and robust medical, dental, vision, life long-term disability, AD&D, EAP, FSA and Voluntary Life, ADD, and LTC options. We also provide a generous firm-contributed health savings account, a pre-tax transportation/parking plan including an employer monthly subsidy of $100 for individuals who work 3+ days/week in the office, and an annual contribution into the employee’s retirement plan. No recruiters.