Trademark Administrator

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.

ESSENTIAL FUNCTIONS:

  • Draft applications for deposit electronically 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 and to Oppose), Power of Attorney documents, Customs recordals and recordal of Change of Name, Security Interests 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, notarization and legalization 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 correspondence and take necessary action.
  • Conduct fact research to complete tasks utilizing specific database and web-based resources.
  • Perform general administrative tasks including answering phones, maintaining attorney calendars, preparing travel/expense reimbursement forms, submitting new matter forms.

QUALIFICATIONS:

  • Bachelor’s degree or minimum of two years of work experience in the field of trademark prosecution and procedure, or equivalent combination of education and work experience.
  • Highly proficient in MS Outlook, Word, and Excel as well as basic computer and database management skills.
  • Exceptional oral and written communication skills and the ability to effectively communicate work flow and project updates.  
  • Strong time management, prioritization, problem-solving, and organizational skills and the ability to work effectively in a high pressure environment.
  • Strong interpersonal skills and ability to work effectively with difference levels of constituencies
  • Flexibility and capacity to respond calmly, efficiently, and effectively in stressful situations.
  • Punctual and reliable and able to meet set deadlines and work effectively under pressure.  
  • Ability to maintain confidentiality of matters and other firm business information.
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Physical Demands: The firm will strive to provide reasonable accommodations, as requested, to enable an employee with a disability to successfully perform this position in our office setting.  Frequent communication is an essential aspect of this position and employees must be able to exchange timely and accurate information in a variety of situations. This position may also encompass maintaining a stationary position for long periods of time (at least up to 50% of the workday) with occasional movement, as well as lifting and/or moving objects that weigh up to 25 pounds.  Other essential functions may apply and employees working remotely have the same or similar requirements.  

Work Environment: The office work environment of the firm is characteristic of the environment the job holder will encounter. In this typical office setting, an employee will encounter standard office equipment and any noise associated with that equipment. The noise level is usually quiet to moderate.  The office setting of Wolf Greenfield requires the ability to manage multiple work priorities along with frequent interruptions.