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Trademark Specialist

Hogan Lovells


Location:
Washington, District of Columbia
Date:
08/02/2017
2017-08-022017-09-01
Job Type:
Other
Job Status:
Full Time
Categories:
  • International Trade
Hogan Lovells
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Job Details

The Trademark Specialist performs trademark practice support duties in the Silicon Valley office and provides legal and non-legal research and reference support to lawyers and business services employees.This position could be located in our Silicon Valley or San Francisco office.

JOB DESCRIPTION ESSENTIAL DUTIES & RESPONSIBILITIES

• Review and clear U.S. and International Trademark Docket.

• Providing trademark support for U.S. and International trademark prosecution and maintenance.

• Provide due diligence trademark support for corporate transactions.

• Assist with preparation and filing of U.S. Customs & Border Protection recordations.

• Assist with preparation and filing of copyright applications.

• Assist with domain name related matters issues.

• Provide support for Trademark Trial and Appeal Board (“TTAB”) opposition and cancellation proceedings and appeals.

• Provide support for trademark enforcement matters.

• Provide ready reference and substantive research assistance to attorneys. In general, the Trademark Specialist is responsible for the day-to-day administration of the firm's trademark practice.

Specific responsibilities include:

Docketing

• Reviewing and clearing the trademark docket for deadlines associated with U.S. and International prosecution and maintenance of trademark applications and registrations as well as TTAB and enforcement related matters.

• Maintaining and organizing the trademark prosecution, trademark enforcement and copyright files.

• Maintaining an agenda of items for discussion at monthly trademark meetings. • Assisting with trademark monitoring.

General

• Conducting, ordering, reviewing and analyzing trademark search reports.

• Knowledgeable and proficient regarding the firm's trademark docketing software and trademark files.

• Preparing and filing trademark applications, extensions of time, statements of use, combined affidavits, and renewals with the U.S. Patent and Trademark Office (“PTO”).

• Communicating with foreign counsel regarding international trademark prosecution and maintenance.

• Knowledgeable of intent to use and use based as well as international filing strategies. • Preparing and filing trademark and copyright assignments.

• Preparing and filing responses to office actions and other miscellaneous documents with the PTO.

• Preparing trademark prosecution and maintenance correspondence to clients and to the PTO.

• Reviewing the Official Gazette.

• Reviewing watch notices.

• Preparing and filing copyright applications.

• Preparing cost estimates for trademark prosecution and maintenance matters.

• Preparing client status reports for trademark, copyright and related matters.

• All members of the firm are expected to participate in our Global Citizenship program.

• Other duties as assigned.

Quality Control

The Trademark Specialist is expected to perform these responsibilities to the standards set by the trademark team to achieve high quality work product in both appearance and substance. All work product produced by the Trademark Specialist is to be for lawyer review. The Trademark Specialist is expected to proactively identify, present, and discuss possible improvements to the trademark practice, and to take proactive steps to perform the above responsibilities. Advanced Skills Advanced skills and responsibilities for the Trademark Specialist include responsibility to perform on-line research to determine the availability of a proposed trademark for use and registration. Such research is intended to supplement, and not replace, the use of trademark search reports prepared by third party services. The analysis of the on-line research and trademark search reports and the preparation of a draft written analysis (using standard forms) are also advanced skills.

Requirements

QUALIFICATIONS REQUIRED SKILLS

• Minimum of two (2)+ years of equivalent trademark experience required.

• Experience with electronic filings at the U.S. Patent & Trademark Office. PREFERRED SKILLS

• Experience in online database searching, including Westlaw, trademark databases, and other online sources.

• Extensive knowledge of substantive trademark law.

• Extensive knowledge of trademark research.

• Extensive knowledge of internet and domain name research.

EDUCATION, CERTIFICATIONS, AND/OR EXPERIENCE

• BS/BA degree or equivalent experience preferred.

PHYSICAL DEMANDS

• While performing the duties of this job, the employee is sometimes required to lift equipment and/or move boxes up to 20 pounds.

HOURS Core hours are Monday through Friday, 9:00 a.m. to 5:30 p.m., including one hour for lunch, with flexibility for additional hours as needed. This job description sets forth the authorities and responsibilities of this position and may be changed from time to time as shall be determined. Qualified applicants will be considered in accordance with the 2014 SF Fair Chance Ordinance. Hogan Lovells is an equal opportunity employer. All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, pregnancy, age, national origin, disability, sexual orientation, gender identity or expression, marital status, genetic information, protected veteran status, or other factors protected by law.

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