IP Trademark Docket Specialist

FULLY REMOTE! It would help if you were within driving distance of any of the 20 US offices in DC, TX, OH, GA, CA, NJ, NYC, AZ, FL, CO, or NM if you need to be in the office on a rare occasion.

Work with the best of the best in the industry!

One of the world’s most substantial integrated law firms with over 40 offices in 20 countries seeks a Trademark Docket Specialist to work near any of their 20 US offices. The firm is renowned for its local connections and global influence, delivering comprehensive legal services across North America, Europe, the Middle East, Asia Pacific, and Latin America.

We are currently seeking an International & Domestic Trademark Docket Specialist to join the Intellectual Property and Technology team.  This position works collectively with other specialists to provide support relating to docketing, soft and hard deadline management of international and domestic Intellectual Property (IP) trademark prosecution matters to include oppositions, cancellation proceedings, watch services, domains, copyrights, and e-record set up in the firm’s Document Management System (iManage).

Responsibilities:

Handles the daily maintenance of international and domestic trademark matters, including the review and docketing of international and domestic prosecution-related matters along with the opposition, cancellation proceedings, and other contentious matters for existing and newly transitioned portfolios. Ability to review intake files to determine completeness and construct past and current prosecution history. Based on procedures established for each client, responsible partner, and office location, records all case data, deadlines, goods & services, and associated remarks in the International Portfolio Practice Management System (IPPMS) by incorporating information from an incoming and outgoing client, agent, foreign IPO, Madrid, USPTO, etc., and any additional third-party communications. Ensure accuracy and integrity of all data to include creating case records and entering all data for international and domestic applications; oppositions, cancellation proceedings, and any other contentious matters; maintain a high level of quality by proofing data entry and ensuring attorney/client/agent/office specific protocols are followed. Processes new international and domestic applications; oppositions, cancellation proceedings, and other contentious related matters; creates new records in IPPMS; enters complete and accurate case details and deadline information, along with client-related data into the IPPMS to meet international and domestic data tracking requirements. Save all incoming/downloaded communications to iManage document system, without exception. Generates and provides to IP&T team members requested specialized IPPMS reports, including client portfolio reports, monthly, quarterly, and annual reports.

Requirements:

An undergraduate degree is preferred but not required

A minimum of 4 consecutive years of international and domestic trademark docketing experience in an Intellectual Property Law environment.

Solid knowledge of the Madrid and Madrid National filing proceedings; USPTO and TTAB trademark processes and rules; trademark prosecution vs. trademark opposition proceedings; intent-to-use vs. use and Request to Divide; domain names and renewals; mark searches and subsequent trademark application filings; Border Patrol and Customs filings and renewals.

37.5-hour workweek, paid OT, very stable, fantastic healthcare benefits, STD, LTD, pet insurance offered, 21 days PTO, 401k, and a very open firm culture. In addition, discounts on cars, entertainment, and sports apparel, to name a few.

Please email your resume to bjsteffan@steffanco.com or call 703-944-5697