Trademark Docketing Specialist
: Job Details :


Trademark Docketing Specialist

Brown Rudnick LLP

Location: New York,NY, USA

Date: 2024-07-01T02:19:20Z

Job Description:

Job Title: Trademark Docketing Specialist

Department: Intellectual Property Group

Office: New York, Washington D.C. or Boston

Report to: Senior Branch Manager

Status: Non-exempt

Summary

We strive to be enterprising, respectful, inclusive, insightful, and tenacious in every aspect of our business, including our interactions with clients, colleagues, and the communities where we have a presence. We rely on these core values to serve clients in key practice areas and industries the pillars of Brown Rudnick: crisis management, which includes restructuring, investigations, and special situations; global litigation; life sciences; technology; and brand and reputation protection.

This role provides essential attorney and client support relating to docketing all phases of domestic and foreign trademark prosecution, in the firm's Intellectual Property group. This role requires current familiarity with trademark docketing procedures, software, and best practices.

Responsibilities

  • Manage and maintain trademark dockets for multiple clients, ensuring accurate data entry and date calculation for docket entries.
  • Docket new trademark application filings, incoming office actions, correspondence (USPTO, WIPO/Madrid, and Foreign Associate), and related deadlines.
  • Run docket reports for trademark cases daily and at other specified intervals.
  • Clear the docket daily, including sending reminders as needed.
  • Advise attorneys and trademark paralegals of issues relevant to clearing the docket, and re-docket actions as needed.
  • Assist in quality assurance review for trademark filings by noting and referring to any errors or omissions observed during the normal course of docketing duties.
  • Prepare docket status and custom reports for clients and attorneys through CPI database as requested.
  • Participate in audits of all patent and trademark files.
  • Assist with verifying the status of patent and trademark applications with the US and worldwide Patent and Trademark databases (e.g., searches, status checks, electronic filing of patent applications and responses) and updating.
  • Audit/review of incoming trademark files and entering of transferred-in cases into CPI database.
  • Assist with patent and trademark file transfers (inbound and outbound)
  • Assist as needed in the preparation and filing of trademark applications and processing renewals with the relevant trademark offices.
  • Update internal databases and systems with relevant information and updates.

Qualifications

  • 2-5 years of Trademark Docketing experience, preferably within a law firm or professional services environment.
  • Working knowledge of US and foreign patent and trademark laws and prosecution procedures, including statutory and filing deadlines.
  • Solid working knowledge of trademark docketing procedures.
  • Experience with CPI or similar software required.
  • Bachelor's degree in a related field (e.g., Law, Business, or Paralegal Studies) preferred.
  • Exceptional attention to detail and accuracy, with the ability to manage multiple tasks simultaneously.
  • Extensive experience with the use of USPTO, WIPO, and foreign patent office websites.
  • Demonstrated knowledge of US and foreign patent rules and procedures.
  • Familiarity with industry-standard patent and trademark docketing software and web-based products (e.g., CPI, FoundationIP, Anaqua).
  • Familiarity with IPDAS preferred.
  • Excellent organizational and time-management skills.
  • Effective communication skills, both written and verbal.
  • Ability to work independently and as part of a team in a fast-paced environment.

Who We Are

Brown Rudnick is an international law firm with roots in post-war 1940s Boston and New York City. From the beginning, our lawyers and business professionals have demonstrated a remarkable blend of entrepreneurialism and collaboration. Over the last 25 years, the combined firm has thrived with full and easy partner/practice integration, rapidly realized profits from practice group collaboration, the continued development of new lawyers and a business professional staff that is well respected in the industry. Today, Brown Rudnick is a recognized leader in several practice and industry areas, such as corporate restructuring, technology, white collar defense, international disputes, intellectual property, and life sciences. The Firm continues to grow strategically and show its entrepreneurial, collaborative spirit that led to its creation.

Salary range based on experience level and location is estimated to be in the range of $70,000 90,000.

Brown Rudnick LLP is an Equal Opportunity Employer, committed to recruiting, developing, and advancing talented professionals from all backgrounds across the spectrum of diversity. All employees and applicants are evaluated on the basis of their qualifications, consistent with applicable state and federal laws, without regard to race, ethnicity, color, ancestry, religious beliefs, sex (including pregnancy, childbirth, breastfeeding and related medical conditions), sexual orientation, gender identity and/or expression, age, national origin, marital status, physical or mental disability, medical condition, genetic information, military or veteran status, or another protected characteristic, all as defined by applicable laws.

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