Trademark Administrator

Location: Philadelphia, PA
Date Posted: 05-03-2018
KJM Staffing Solutions is currently seeking an experienced Administrator for our large law firm client.  This role will  be based in the Philadelphia office of this global law firm and offers a high base salary and excellent benefits. 
 
ESSENTIAL FUNCTIONS:
  • Reviews, sorts, routes, and files in IManage PTO and foreign counsel mail, faxes and emails
  • Assists with trademark prosecution and portfolio management, including working with outside agents on searches, filings and oppositions
  • Drafts letters of advice to clients regarding foreign registration and renewal certificates
  • Drafts letters of advice to clients regarding U.S. prosecution and maintenance
  • Supervises records and filing function of trademark files
  • Dockets and de-dockets deadlines for domestic, international and Madrid Protocol trademarks
  • Manages and maintains docket database for all marks worldwide
  • Generates reports from docket database including client reports, deadline reports, and ad hoc requests
  • Reviews and monitors docket to ensure deadlines are met
  • Assists attorneys with trademark clearances, cancellation actions, and registration renewals
  • Assists attorneys with matters relating to opposition, cancellation, and infringement
  • Assists attorneys with online content, domain disputes, and researching domain name matters
  • Corresponds with foreign counsel regarding active trademark matters
  • Reviews and processes foreign counsel invoices; corresponds with vendor regarding outstanding invoices and statements of account
  • Generates Global Estimator Reports
  • Maintains Deposit Account at USPTO and coordinates with Finance
  • Prepares new matter reports and engagement letters
  • Prepares and follows up on specialized proformas and invoices for multinational clients; provides clients with estimates and budgets. Maintains contacts in DechertCRM
  • Coordinates arrangements of group attendance and itineraries at professional meetings and conferences
  • Coordinates department orientation of new personnel
  • Schedules Trademark Group meetings
  • Assists with preparation of marketing materials for client development purposes
  • Liaises with IT personnel and vendors to address issues with docket database
 
REQUIREMENTS:
  • Bachelor’s Degree required.
  • Minimum of 3 years of Trademark/IP Administration (Foreign & US) experience in a law firm.
  • Solid working knowledge of iManage, Word, Excel, Elite, Legal Key, Carpe Diem, Global Estimator, as well as CPi.
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