Senior Trademark Specialist

About the role

The Senior Trademark Specialist provides technical and administrative support to the team, attorneys, paralegals, and clients in all aspects of trademark and IP practice management. A hybrid work schedule is available.

Responsibilities

• Review and manage daily dockets of assigned attorneys, working closely with timekeepers to ensure all deadlines are met daily.
• Oversee and manage new business intakes. Submit new client, matter and pro bono intakes requests, complete billing information and track status.
• Manage and disperse incoming mail and other related correspondence.
• Control phone, email and calendars for assigned timekeepers, ensuring all details are anticipated, arranged and well-coordinated.
• Aid in preparing and filing documents related to prosecution and/or maintenance of US and foreign trademark.
• Review trademark status reports for clients, draft client reporting letters when original certificates of registration are received and mail out after docketing and approval.
• Communicate with foreign associates, including foreign filing instruction letters and obtain and send copies of registration certificates or other evidence requested.
• Aid in pulling applications/registrations and other PTO information from the United States Patent and Trademark Office (USPTO) website.
• Report correspondence accurately and timely with accordance with firm/client guidelines. Respond to client inquires and requests for information and provide status reports as needed.
• Maintain advanced knowledge of the status of ongoing client matters and keep up-to-date contact lists, anticipate next steps and prepare for them in advance.
• Maintain accurate electronic files in accordance with firm/practice group guidelines and procedures.
• Oversee and assign incoming/outgoing file transfers.
• Ensure files are up-to-date in Aderant.
• Promptly perform administrative tasks (i.e. expense reimbursement, business development, etc.) in InterAction, Chrome Rivers and other firm applications.
• Manage monthly billing and provide documentation and edits.
• Perform other duties as assigned.

Requirements

• 5-8 years of trademark experience, preferably within a law firm or professional services environment.
• Bachelor’s Degree or equivalent work experience required.
• Advanced knowledge and familiarity with trademark prosecution procedures.
• Expert understanding of trademark rules of practice (37 CFR) and with some trademark clearance searching, copyrights, domain name registrations and TTAB proceedings.
• Working knowledge with USPTO Trademark systems (i.e. TEAS, the Assignment Branch and the TTAB).
• Proficiency with windows-based software applications, including Microsoft Office Suite and the firm's document management system (i.e. NetDocuments).
• Exceptional interpersonal and communication skills, both verbal and written.
• Excellent attention to detail with the ability to navigate multiple tasks and deadlines.