Trademark and Copyright Specialist

Hogan Lovells•Washington DC, DC

6d•Onsite

About The Position

Hogan Lovells Cadwalader US LLP’s Intellectual Property Practice seeks a Trademark and Copyright Specialist with a minimum of five years’ experience with trademark and copyright matters to join its Washington, D.C. office and internationally-renowned trademark, advertising, copyright, and technology (“TACT”) team. Our team counsels some of the world’s most recognized brands to protect, grow, and enforce valuable intellectual property assets across industries and global jurisdictions. The Trademark and Copyright Specialist will support all aspects of U.S. and international trademark and copyright prosecution, maintenance, enforcement, and portfolio management, including preparing and filing applications and post-registration submissions, managing domestic and foreign dockets, coordinating with clients and foreign counsel, and ensuring compliance with all filing deadlines. The role also includes supporting TTAB proceedings, conducting trademark searches and IP due diligence, preparing reports and cost estimates, communicating with the USPTO and U.S. Copyright Office, and assisting attorneys with portfolio strategy and client counseling. This is a billable position requiring accurate and timely submission of matter-attributable billable hours. Other responsibilities include a variety of IP-related administrative tasks. Importantly, this position requires proactively completing tasks and following through with speedy resolution of issues with minimal supervision, including the ability to meet deadlines under tight time constraints and other demands.

Requirements

Five (5)+ years of trademark and copyright prosecution support experience required.
Responsible for completing tasks proactively and following through with the resolution of issues with minimal supervision.
Ability to meet deadlines under very tight time constraints and other demands.
Strong interpersonal skills and the ability to work seamlessly with a small team.
Excellent oral and written communication skills.
Flexible attitude and the ability to deal well with changing assignments and priorities.
Ability to multitask and take initiative to seek out new responsibilities.
Bachelor’s degree required or equivalent combination of education and work experience.

Nice To Haves

Billing experience, including electronic billing, preferred.

Responsibilities

Prepare and file trademark applications, extensions of time, statements of use, notices of allowance, combined affidavits, renewals, responses to office actions and requests for information, ownership or name changes, post-publication amendments, powers of attorney, petitions, assignments, recordation of security interests, and other necessary prosecution-related submissions with the U.S. Patent and Trademark Office in compliance with USPTO guidelines, and reporting filings to clients.
Prepare and file copyright applications, requests for reconsideration, assignment, ownership or name changes, recordations of security interests, and other necessary prosecution-related submissions with the U.S. Copyright Office in compliance with USCO guidelines, and reporting filings to clients.
Responsible for daily tracking, review and clearance of trademark and copyright prosecution docket for both foreign and domestic matters insuring all statutory and non-statutory deadlines are met without fail and provide timely reminders to attorneys and clients regarding upcoming deadlines as needed.
Provide U.S. and international trademark and copyright prosecution, maintenance and enforcement support.
Assist with all aspects of TTAB opposition and cancellation proceedings, including finalization and filing of documents with the TTAB, creation of exhibits and preparation and organization of evidence.
Communicate with foreign counsel, colleagues and clients regarding international trademark prosecution and maintenance.
Preparing client cost estimate spreadsheets.
Prepare routine correspondence and documents for attorney review, including monthly portfolio reports.
Confirm the status of trademark cases with the USPTO, including direct communications with USPTO examining attorneys, post-registration specialists, and Assignment Branch employees.
Draft search queries, generate and review global trademark search reports, and prepare draft analysis of search reports for attorney review, using Corsearch.
Conduct IP due diligence searches and review and revise corporate documentation related to same.
Respond timely to all attorney requests.
Act as an advocate for the TACT practice; Support the TACT practice by identifying and proposing innovative solutions to any IP or firm-wide areas for improvement and then following through on associated action items to completion.
Review and submission of trademark-related third-party invoices and USPTO deposit account fees.
Maintain tracking documents for client portfolios to indicate matters, status and deadlines.
Assist with researching issues relating to monthly client billing, such as client inquiries, estimates, budget tracking, or invoice discrepancies.
Demonstrate knowledge of the firm’s culture, practices, business, and structure.
All members of the firm are encouraged to participate in our global Responsible Business program.
Other duties and projects as assigned.