IP Trademark Assistant

Summary: Under direct supervision of the IP Operations Manager and IP Department attorneys, and according to established policies and procedures, the Trademark Assistant performs a variety of docketing, file maintenance, document and correspondence preparation, and other related duties.

A qualified candidate should have a minimum of two years’ experience working as an Trademark Assistant with both U.S. and foreign trademark applications, ability to prepare associated documents and correspondence, and have a strong understanding of trademark deadlines and procedures.

Key Responsibilities:

• Reviews incoming mail for assigned attorney(s) and drafts appropriate correspondence and documents in response.
• Reviews and maintains weekly docket; coordinates with attorneys regarding deadlines.
• Prepares documents, instruction letters, assignments, Reservation of Powers of Attorney Renewals, Trademark Office documents, filing instructions for all direct-filed foreign applications and other appropriate actions based on docket review.
• Coordinates execution and legalization of U.S. and foreign formal documents, as required; prepares foreign filing estimates
• Prepares U.S. and foreign reporting and reminder letters.
• Prepares and electronically files with the USPTO documents such as, but not limited to: new applications, Statements of Use, Declarations of Use, Renewals, Extensions of Time, Powers of Attorney and Responses to Office Actions.
• Prepares docket and portfolio reports as requested.
• Other duties as assigned.

The employee must be able to perform all essential job duties and responsibilities of this position satisfactorily and as outlined, with or without reasonable accommodations. Reasonable accommodation requests may be accommodated, absent undue firm hardship.

Qualifications:

• High School Diploma required, bachelor’s degree preferred.
• A minimum of two years’ experience working as a Trademark Assistant supporting trademark attorneys.
• Strong understanding of the trademark prosecution process and associated correspondence and deadlines.
• Knowledge and understanding of procedures, fees and forms of the USPTO.
• Exceptional attention to detail with good analytical and critical thinking skills.
• Ability to understand and maintain a daily docket.
• Ability to compose and prepare correspondence to clients, foreign associates and third parties.
• Excellent written and oral communication skills, including strong grammar, spelling and proofreading skills.
• Proven ability to work independently as well as in a team environment.
• Ability to organize and prioritize numerous tasks and complete them under time constraints.
• Computer and database skills, including Word, Excel, Outlook, InTapp and iManage. Experience using CPi preferred but not required.
• Work occasionally requires a high level of mental effort when performing a high-volume of tasks and performing other essential duties under deadline.

This job description is intended to describe the general requirements of this position. As such, it is not designed to cover or contain a comprehensive listing of job duties or responsibilities required in this job. Subject to firm needs, duties and responsibilities of this position may change at any time, on a temporary or permanent basis, and with or without notice.

Equal Employment and Opportunity Statement:

Barnes & Thornburg is committed to equal employment opportunity in both principle and as a matter of policy. We will recruit, hire, train, promote, compensate and provide benefits to all applicants and employees without regard to ancestry, sex, race, color, ethnicity, national origin, gender, age, religion, religious creed, mental and/or physical disability, medical condition, military and/or veteran’s status, genetic information, marital status, sexual orientation, gender identity and/or expression, or any other basis protected by applicable federal, state and local laws. This policy applies to all recruiting, hiring, promotions, upgrades, layoffs, compensation, benefits, terminations and all other privileges, terms and conditions of employment. The firm complies fully with all federal, state and local equal employment opportunity laws.