Senior Trademark Specialist

Job Description

The Senior Trademark Specialist is responsible for providing technical and administrative support to the team, attorneys, paralegals, and clients in all aspects of trademark and IP practice management. A hybrid work schedule is available for this position.

Location: Boston, MA;
Chicago, IL;
Washington, DC

• Review and manage daily dockets of assigned attorneys, working closely with timekeepers to ensure all deadlines are met daily. This includes reviewing and annotating daily docket for the assigned timekeepers and keeping the IP Docket Specialist informed.
• Oversee and manage new business intakes. This includes submitting new client, matter and pro bono intakes requests, complete billing information and track status.
• Manage and disperse incoming mail and other related correspondence.
• Control phone, email and calendars for assigned timekeepers, ensuring all details are anticipated, arranged and well-coordinated.
• Assist with preparing and filing documents related to prosecution and/or maintenance of US and foreign trademark.
• Review trademark status reports for clients, draft client reporting letters when original certificates of registration are received and mail out after docketing and approval.
• Communicate with foreign associates, including foreign filing instruction letters and obtain and send copies of registration certificates or other evidence requested.
• Assist with pulling applications/registrations and other PTO information from the United Stated Patent and Trademark Office (USPTO) website.
• Report correspondence accurately and timely with accordance with firm/client guidelines. Respond to client inquires and requests for information and provide status reports as needed.
• Maintain advanced knowledge of the status of ongoing client matters and keep up-to-date contact lists, anticipate next steps and prepare for them in advance.
• Maintain accurate electronic files in accordance with firm/practice group guidelines and procedures.
• Oversee and assign incoming/outgoing file transfers.
• Ensure files are up-to-date in Aderant.
• Promptly perform administrative tasks (i.e. expense reimbursement, business development, etc.) in Inter Action, Chrome Rivers and other firm applications.
• Manage monthly billing and provide documentation and edits.
• Perform other duties as assigned.

• 5-8 years of trademark experience, preferably within a law firm or professional services environment.
• Bachelor’s Degree or equivalent work experience required.
• Advanced knowledge and familiarity with trademark prosecution procedures.
• Expert understanding of trademark rules of practice (37 CFR) and with some trademark clearance searching, copyrights, domain name registrations and TTAB proceedings.
• Working knowledge with USPTO Trademark systems (i.e. TEAS, the Assignment Branch and the TTAB).
• Proficiency with windows-based software applications, including Microsoft Office Suite and the firms document management system (i.e. Net Documents).
• Exceptional interpersonal and communication skills, both verbal and written.
• Excellent attention to detail with the ability to navigate multiple tasks and deadlines.

Nixon Peabody LLP is an Equal Opportunity / Affirmative Action

Employer:

Disability / Veteran. Nixon Peabody is committed to creating a fair workplace and does not discriminate against any employee or applicant for employment because of race, creed, color, national origin, sex, age, disability, marital status, sexual orientation, citizenship status, or any other characteristic protected by applicable law.

To comply with Federal law, Nixon Peabody participates in E-Verify. All newly hired employees are verified through this electronic system established by the Department of Homeland Security (DHS) and the Social Security Administration (SSA) to confirm their identity and employment eligibility. Please refer to the Notice of E-Verify Participation and the Right to Work posters on the Nixon Peabody Careers page for more information.

• Boston, MA: $77,500 to $131,500
• Chicago, IL: $77,500 to $131,500
• Washington, DC: $77,500 to $131,500

In addition to a standard benefits package, this role may be eligible for additional contingent compensation based on an array of factors, including but not limited to: work performance, geographic location, work experience, education, and qualifications. Because such contingent compensation is not yet calculable or may be zero ($0) in some circumstances, the above-listed salary range(s) are Nixon Peabody’s good faith estimate of the annual salary(ies) it reasonably expects to pay for the position at the time of this posting.