Senior Trademark Specialist

About the role

A career at Nixon Peabody is the opportunity to do work that matters. It’s the chance to use your knowledge to shape what’s ahead. To share, to innovate, to learn at a firm that taps the power of collective thinking. We’ve created a dynamic, energizing environment that promotes success for our clients and each other. We offer fast growth, connectedness and training in business as well as law. A hybrid work schedule is available for this position.

Responsibilities

• Review and manage daily dockets of assigned attorneys, working closely with timekeepers to ensure all deadlines are met daily. This includes reviewing and annotating daily docket for the assigned timekeepers and keeping the IP Docket Specialist informed.
• Oversee and manage new business intakes, including submitting new client, matter and pro bono intake requests, completing billing information, and tracking 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.
• Assist with preparing and filing documents related to prosecution and/or maintenance of US and foreign trademarks.
• 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 obtaining and sending copies of registration certificates or other evidence requested.
• Assist with pulling applications/registrations and other PTO information from the United States Patent and Trademark Office (USPTO) website.
• Report correspondence accurately and timely in accordance with firm/client guidelines. Respond to client inquiries and requests for information and provide status reports as needed.
• Maintain advanced knowledge of the status of ongoing client matters, 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 (e.g., expense reimbursement, business development) 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 experience with trademark clearance searching, copyrights, domain name registrations, and TTAB proceedings.
• Working knowledge of USPTO Trademark systems (e.g., TEAS, the Assignment Branch, and the TTAB).
• Proficiency with Windows-based software applications, including Microsoft Office Suite and the firm’s document management system (e.g., NetDocuments).
• Exceptional interpersonal and communication skills, both verbal and written.
• Excellent attention to detail with the ability to navigate multiple tasks and deadlines.

Location

Boston, MA; Chicago, IL; Washington, DC

Pay

The anticipated annual salary range for this position, depending on location, is as follows:

• Boston, MA: $77,500 to $131,500
• Chicago, IL: $77,500 to $131,500
• Washington, DC: $77,500 to $131,500

In addition to a standard benefits package, this role may be eligible for additional contingent compensation based on factors such as work performance, geographic location, work experience, education, and qualifications.