Prepare and file U.S. trademark prosecution and maintenance documents electronically with the USPTO including but not limited to: applications, office action responses, extensions of time, statements of use, affidavits, renewals, assignments and powers of attorneys
Conduct trademark screening searches using third search party platforms and common law searches
Correspond with clients regarding routine phases of trademark prosecution and maintenance matters
Assist attorneys in TTAB filings, i.e., extensions of time to file a notice of opposition, consent motions
Prepare and file trademark documents with WIPO including but not limited to applications for International Registration, responses to Notices of Irregularity, renewals, assignments and powers of attorney
Work with and correspond with foreign counsel in connection with prosecution and maintenance of trademark applications/registrations outside of the United States, including attending to notarization and legalization of documents
Prepare and record ownership and change of name documents related to trademarks
Conduct due diligence on trademark portfolios
Prepare and file customs registrations and renewals with the U.S. Customs and Border Patrol
Prepare cost estimates for new filings
Prepare and file copyright applications for registration
Assist with trademark enforcement matters including working with and corresponding foreign counsel regarding potential oppositions, cancellations and cease & desist letters
Assist with monitoring attorney dockets and working with internal personnel to manage deadlines
Record billable hours timely and accurately utilizing practice/firm billing protocols
Job Requirements:
Position qualifications
Attainment of at least a Bachelor's Degree is required
4 to 10 years working in a trademark department with at least 4 years of trademark prosecution related duties; experience with copyrights would be a plus
Passionate about learning new skills and intellectual property
Exceptional writing, editing, research, organizational, and analytical skills and attention to detail
Expert in Microsoft Excel, PowerPoint, and Word
Ability to work well under pressure and handle multiple, simultaneous tasks efficiently
Strong work ethic, including willingness to work evenings and weekends as needed
Professional demeanor, attention to detail, and great organizational skills are essential
Ability to provide direction and training to junior team members
Ability to maintain discretion and privacy with confidential matters and documents
Ability to meet minimum billable hourly requirement
Proficiency in Microsoft Office Suite, PDF creation tool(s), document management software, Elite or other timekeeping software, Internet required
Excellent client service, ability to work overtime and travel as needed
