The Trademark Administrator will be responsible for assisting attorneys in the preparation of trademark prosecution (foreign and domestic) including foreign opposition and cancellation proceedings. In addition, the Trademark Administrator will be responsible for client and matter opening, client data management, and additional responsibilities as needed.
- Draft applications for electronic filing with U.S. Trademark Office and WIPO (including subsequent designations)
- Draft responses to Office Actions for electronic filing to resolve informalities (e.g., goods/services amendments, disclaimer, suspension, etc.)
- Prepare Statements of Use (“SOU”), Extensions of Time (to file SOU), Power of Attorney documents, and ownership and Change of Name recordations for electronic filing
- Draft correspondence to foreign counsel relating to new trademark filings and prosecution up to registration
- Manage attorney foreign and domestic docket, including foreign opposition/cancellation matters
- Coordinate execution of documents
- Oversee and maintain integrity of electronic data and files relating to trademark portfolios
- Prepare various summary reports to meet client requests
- Review incoming and outgoing correspondence for record updating and docketing
- Conduct fact research to complete tasks utilizing specific databases and web-based resources
- Perform general administrative tasks including answering phones, maintaining attorney calendars, preparing travel/expense reimbursement forms, submitting new matter forms.
- Comprehensive understanding of domestic and foreign trademark prosecution and procedure
- Excellent organizational skills, with meticulous attention to detail and deadlines
- Strong interpersonal skills and ability to communicate effectively with a diverse community (clients and co-counsel, domestic and foreign), in close coordination with team members across departments
- Capacity to work under pressure to meet deadlines and produce high quality work in volume.
- High proficiency with Microsoft Word, Excel, Outlook, PowerPoint, Adobe Acrobat, USPTO e-filing platforms, CPI or similar trademark management software, IPDAS, Elite Enterprise, Desksite.