Trademark Docket Clerk

Boston, MA; Providence, RI; Connecticut Offices; New York, NY; Parsippany, NJ; Florida Offices

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Position Summary:

Seeking an experienced Docketing Specialist to join the firm's expanding Trademark Group. The Docketing Specialist is responsible for a wide range of trademark docketing and administrative functions, including processing US and Foreign Trademark mail utilizing the firm's docketing system (WebTMS). The Docketing Specialist will review and process all incoming trademark, copyright, and dispute mail from the USPTO, Clients, and Foreign Agents/Trademark Offices as well as de-docketing completed items and requests to update deadlines. The Docket Specialist will also process all new trademark matters utilizing the Firm's new business database, WebTMS and Document Management system. The Docket Specialist will save all external emails and incoming mail to the proper electronic file folders and distribute the same electronically. The Docket Specialist will also communicate routinely with attorneys, paralegals and legal assistants and participate in assigned projects and/or tasks to support the trademark group.
Essential Functions:

Monitors and maintains the integrity of the Firm's Trademark Docketing System (WebTMS)
Assists in the development and maintenance of a Docket Manual and best practice materials relating to docketing and the Trademark Group
Identifies problem cases or actions; resolves or escalates to manager and attorneys when needed
Quality Reviews all work product to ensure accuracy
Runs daily, weekly and monthly reports in a timely and efficient manner
Maintains and manages the firm's existing docketing platform and provides recommendations and insight to manager and leadership on upgrades, enhancements or replacement
Reviews IP Country Law Rules of Practice and maintains proficiency of PTO procedural changes to ensure the Trademark team is in compliance
Assists with IP client intake and transfer requests; coordinates with the Records Department, Billing, Matter Maintenance and other personnel on incoming and outgoing Trademark Portfolios, running reports and dockets and assisting with the transfer process start to finish
Maintains a knowledge of trends, developments, and legislative rulings impacting intellectual property law, including revisions to international country law, USPTO procedural changes
Perform research on various trademark office website to confirm data, bibliographic data, status of cases
Adhere to firm standards and procedures; ensure team members follow procedures; reinforce/remind team of the proper protocol and procedures
Monitoring daily deadlines; editing actions and adding extensions of time/grace periods when applicable
De-docket action items upon proof of filing or notification of item being completed; asking questions if action item is incomplete or missing any information
Identifying and reporting discrepancies and working to resolve them with attorney guidance

Skills

A deep and thorough knowledge of Trademark Prosecution including U.S. and Foreign Jurisdictions; strong knowledge of procedures and regulations, including foreign and domestic prosecution, and post-grant/post-registration rules and maintenance fee deadlines/grace periods
Knowledge of trademark terminology, prosecution procedures, and deadlines for both US and foreign intellectual property matters
Proactive, independent, and helpful with all tasks assigned
Ability to use judgement and prosecution knowledge when updating the docket; keep case remarks clean and concise; asking for clarification when needed
A strong focus on customer service and responsiveness
Aptitude for continuous improvement and automation
Excellent organizational and communication skills and be capable of promoting improvement-oriented ideas and developing new strategies
Solid PC skills, including IP docketing databases, PDF programs, filing and other specialized IP practice platforms
Proficiency in document management systems, workflow technology platforms, MS Office, Word, and Excel, New Matter/New Business Intake
Work effectively and efficiently in a fast paced, deadline driven environment
Ability to recognize and shift priorities
Ability to utilize all resources, including researching case information, deadlines, extensions and various requirements with the USPTO and Foreign Trademark Offices
Excellent communication skills with all levels of staff, management and attorneys within the trademark department and firm wide

Requirements:

A minimum of three to six years (3-6+) of experience in the Trademark docketing field
Bachelor's degree or equivalent combination of education and work experience
Proficiency in basic computer and database management skills, including Microsoft software applications such as Outlook, Word, and Excel
Proficiency with IP software applications such as WebTMS or other docketing systems·
Exceptional verbal/written communication and interpersonal skills
Strong time management, prioritization, problem-solving, and organizational skills
Ability to work effectively at all firm levels
Punctual and reliable and able to meet set deadlines and work effectively under pressure

Compensation & Benefits:

This position offers a compensation range of $85,000 to $105,000 annually, commensurate with experience and qualifications. Final compensation will be determined based on factors such as experience, skills, and qualifications. Staff may also be eligible for discretionary year-end bonuses and annual merit-based increase. The comprehensive benefits package includes medical, dental, vision, life, and disability insurance, a 401 (k) retirement plan and paid time off.

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