Note: The job is a remote job and is open to candidates in USA. Stoel Rives LLP has an immediate opening for a Brand Protection Administrator. This position assists trademark attorneys in handling a variety of billable and operational projects related to worldwide trademark portfolios associated with clients’ brands, ensuring smooth and accurate attention to client brand portfolios.
Responsibilities
- Perform all billable non-attorney tasks relating to U.S. and worldwide trademark applications and portfolios
- Receive assignments directly from trademark attorneys for application filings, extensions, statements of use, registration maintenance and renewal and recording assignments, security interests and releases
- Summarize trademark office action issues in the USPTO, WIPO and with foreign associates, and obtain attorney responses and direction for timely action
- Conduct initial trademark searches using the USPTO, WIPO, and third-party search tools, and prepare draft search reports for attorney review
- Assist with opposition, cancellation and appeals filings before the TTAB
- Assist with UDRP filings with WIPO and other arbitrators
- Review and manage brand portfolio due dates, work with docketing staff to maintain, revise and update the trademark docket, and ensure timely and prompt responses from attorneys and other internal team members
- Prepare copyright applications
- Prepare and send foreign associate correspondence regarding new applications, responses, renewals, and recording assignments, security interests and releases
- Provide and maintain electronic and paper files, as well as review and approval of all docketed deadlines
- Assist with investigation, research, USPTO informational searches and internet searches, review documents, and summarize findings as directed
- Assist attorneys with corporate due diligence including review of trademark portfolios, preparation and review of schedules, chain of title review and cleanup
- Handle new client file intakes, and new counsel transfers
- Assist with trademark litigation filings in federal and state courts (preferred, but not required)
- Learn and maintain complete knowledge of the patent and trademark docketing software program (Foundation IP), train staff, assist practitioners in the use of the docket system, and maintain updated procedures requested by practitioners regarding implementation of firm docketing policies
- Photocopy, file, and search files for documents; prepare, index, and review documents for delivery, storage and destruction
- Other duties as assigned
Skills
- High school degree or equivalent required
- Must have paralegal certificate in appropriate jurisdiction
- Minimum of 5+ years' relevant experience as a trademark paralegal, at least 2 of which should be at a major law firm
- Strong oral and written communication
- Ability to learn
- Outstanding attention to detail
- Initiative
- Adaptability
- Dependability
- Flexibility
- Client service and teamwork orientation
- Independent judgment
- Ability to independently manage tasks and deadlines
- Ability to focus attention for long periods of time
- Work without direct supervision in a fast-paced environment
- Strong aptitude for computer software application programs
- Ability to learn quickly or have working knowledge of applicable software programs for carrying out trademark and copyright duties
- Must be capable of using the firm's timekeeping system to capture time for all billable tasks and to record disbursements
- Must be capable of operating a personal computer, printer, photocopier, e-fax, telephone, and other regular office equipment
- Must be comfortable using USPTO systems including TEAS, Trademark Center, and Assignment Center
- Must demonstrate curiosity and willingness to test drive firm-approved artificial intelligence solutions to drive efficiency and accuracy in the trademark prosecution practice
- Must be able to enter computer data for long periods of time
- Must have a high level of concentration and attention to detail
- Must have adequate addition and subtraction skills
- Must be capable of reading and interpreting information in printed, handwritten or computer form, instructions, legal correspondence, memoranda, forms, documents, reference publications, or reference books
- Assist with trademark litigation filings in federal and state courts (preferred, but not required)
- College degree preferred
- Additional trademark prosecution, docketing, and international portfolio management experience is welcome
Benefits
- Annual discretionary bonus
- Paid family & medical leave
- Competitive PTO
- Remote work options
- Competitive and robust medical, dental, vision, life long-term disability, AD&D, EAP, FSA and Voluntary Life, ADD, and LTC options
- Generous firm-contributed health savings account
- Pre-tax transportation/parking plan including an employer monthly subsidy of $100 for individuals who work 3+ days/week in the office
- Annual contribution into the employee’s retirement plan
Company Overview