Trademark Clerk

Hogan Lovells • Washington, DC

1d • $45,000 - $70,000

About The Position

The Trademark Clerk is responsible for supporting functions of the IP trademark prosecution team, including client attorney and specialist support relating to all phases of domestic and foreign trademark prosecution, from pre-filing to pending applications and maintenance of registrations. This position requires familiarity with trademark prosecution and records management, including electronic filing, and requires coordination of trademark prosecution activities with in-house attorneys, specialists, and foreign associates. This is a billable position requiring accurate and timely submission of matter attributable billable hours. Other responsibilities include a variety of trademark-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. TRADEMARK PROSECUTION SUPPORT: Maintain and update foreign and U.S. trademark and copyright electronic prosecution files and case materials. Analyze and report out to clients and attorneys incoming trademark watch notices and comprehensive search reports. Order/Cancel trademark watch notice services with CompuMark. Prepare draft analysis of search reports for attorney review. Process third party invoices and USPTO deposit account reconcilliations. Prepare and send clients deadline reminders and status reports including office action reporting letters and opening reminders. Update Anaqua (docketing software) whenever a client communication is sent. Prepare and transmit standardized correspondence relating to trademark and copyright prosecution to clients and attorneys including reporting letters, invoices, search reports and portfolio status reports. Review the docket on a daily basis to track deadlines associated with trademark and copyright prosecution and assist with the daily clearance of deadlines. Maintain database of standardized form letters. Assist with the processing of third-party invoices. Assist in quality assurance review of trademark and copyright filings and correspondence by noting and referring any errors or omissions observed during the normal course of records maintenance duties. Assist in checking and updating the status of trademark cases with the U.S. Patent and Trademark Office, U.S. Copyright Office, and foreign trademark offices when appropriate. ADMINISTRATIVE Act as an advocate for the trademark team. This position supports the trademark team 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. Other duties and projects as assigned. FIRM KNOWLEDGE All members of the firm are encouraged to participate in our Global Responsible Business program. Demonstrate knowledge of the firm’s culture, practices, business, and structure. Demonstrate knowledge and adherence to basic firm policies, procedures, and processes. INITIATIVE Take initiative beyond routine responsibility. Seek out and accept new responsibilities. Seek development opportunities to enhance skills. ACCOUNTABILITY Own mistakes and take corrective action. Meet work deadlines as assigned. Meet firm standards for attendance and punctuality. Meet deadlines for all required firm processes, including timesheets, time entry, and other financial documentation.

Requirements

• Must be responsible for completing tasks proactively and following through with the resolution of issues with minimal supervision, including the ability to meet deadlines under tight time constraints and other demands.
• Possess strong interpersonal skills and the ability to work seamlessly with a small group of support staff.
• Excellent grammar, spelling, punctuation, and written communication skills.
• Exceptional analytical and oral communication skills.
• Flexible attitude and the ability to deal well with changing assignments and priorities.
• Ability to multitask.
• Experience in electronic records maintenance required.
• Bachelor’s degree required or equivalent combination of education and work experience.

Nice To Haves

• Experience in physical and electronic records maintenance preferred.
• Knowledge of U.S. and foreign trademark prosecution procedures preferred.
• Billing experience, including electronic billing, preferred.
• At least three years of trademark-specific experience is preferred.

Responsibilities

• Maintain and update foreign and U.S. trademark and copyright electronic prosecution files and case materials.
• Analyze and report out to clients and attorneys incoming trademark watch notices and comprehensive search reports.
• Order/Cancel trademark watch notice services with CompuMark.
• Prepare draft analysis of search reports for attorney review.
• Process third party invoices and USPTO deposit account reconcilliations.
• Prepare and send clients deadline reminders and status reports including office action reporting letters and opening reminders.
• Update Anaqua (docketing software) whenever a client communication is sent.
• Prepare and transmit standardized correspondence relating to trademark and copyright prosecution to clients and attorneys including reporting letters, invoices, search reports and portfolio status reports.
• Review the docket on a daily basis to track deadlines associated with trademark and copyright prosecution and assist with the daily clearance of deadlines.
• Maintain database of standardized form letters.
• Assist with the processing of third-party invoices.
• Assist in quality assurance review of trademark and copyright filings and correspondence by noting and referring any errors or omissions observed during the normal course of records maintenance duties.
• Assist in checking and updating the status of trademark cases with the U.S. Patent and Trademark Office, U.S. Copyright Office, and foreign trademark offices when appropriate.
• Act as an advocate for the trademark team.
• Identify and proposing innovative solutions to any IP or firm-wide areas for improvement and then following through on associated action items to completion.
• Other duties and projects as assigned.
• Demonstrate knowledge of the firm’s culture, practices, business, and structure.
• Demonstrate knowledge and adherence to basic firm policies, procedures, and processes.
• Take initiative beyond routine responsibility.
• Seek out and accept new responsibilities.
• Seek development opportunities to enhance skills.
• Own mistakes and take corrective action.
• Meet work deadlines as assigned.
• Meet firm standards for attendance and punctuality.
• Meet deadlines for all required firm processes, including timesheets, time entry, and other financial documentation.

Benefits

• Employees in this role are also eligible for benefits offered by the firm, subject to applicable plan terms and conditions, which currently include medical, dental, and vision insurance; a 401(k) retirement plan; and paid time off.

What This Job Offers

• Job Type: Full-time
• Career Level: Entry Level