Trademark Supervisor

BakerHostetler•Costa Mesa, CA

57d

About The Position

Our Firmwide IP Services department has an opportunity for a Trademark Supervisor role. Reporting to the Senior IP Manager, this position will coordinate/supervise a team of Trademark Paralegals and support the trademark prosecution practice at BakerHostetler. The hours for this role are 8a-5p PT. Supervisor Responsibilities: Supervise Trademark Paralegals, ensuring adherence to group policies including billable hours requirements, docket management and attendance. Conduct regular team meetings to discuss ongoing work, team issues, IP group and firm news; ensuring that team members are provided with information as needed. Provide first level support to Trademark Paralegals regarding IP-specific questions and day-to-day operational issues. Monitor Trademark Paralegal schedules; including ensuring regular hours are generally adhered to, providing coverage when staff are absent, processing requests for overtime or time off and approving timecards in the firm’s time management system. Assist with training IP Services personnel as needed. Participate in coaching, performance feedback and reviews for Trademark Paralegals. Other duties as assigned. Prosecution Responsibilities: Support the trademark prosecution practice; including preparation and filing of trademark and copyright applications with the USPTO and WIPO, formality documents such Assignments, Office Action Responses, Statements of Use, Affidavits of Use, Renewals and other related filings; TTAB filings, oppositions and cancellations, UDRP takedowns. Correspond with NonUS agents regarding foreign filings and related activities. Communicate with clients regarding status of trademark matters and related activities. Process incoming files transferred to the firm. Prepare reports related to trademark prosecution activities; including client status reports and docket reports. Ensure accurate record keeping related to trademark prosecution activities; including maintaining the IP prosecution docket, saving correspondence and documents in the firm’s document management system. Conduct international and US preliminary searches via internet and electronic databases; assist in review of search reports and other issues related to clearance of marks. Capture billable time in the firm’s timekeeping system. Stay up-to-date with changes to Intellectual Property rules and regulations. Maintain excellent client service to internal and external clients.

Requirements

Associate’s degree or work experience with a minimum of 10 years of trademark filing and prosecution experience.
In-depth knowledge of trademark filing and prosecution practices, and adjacent dispute actions, in the USPTO, WIPO, and major jurisdictions worldwide.
Ability to handle multiple projects under limited supervision and meet deadlines.
Strong written and oral communication skills.
Ability to effectively prioritize work to meet attorney and client needs.
Must have a sense of urgency relating to client requests.
Strong work ethic, flexible, dependable, and can-do attitude.
Ability to compose correspondence to attorneys and clients.
Aptitude to utilize the firm’s software to improve efficiency.
Proficiency with Microsoft Office Suite, including Word and Excel, and Document Management Systems such as NetDocs.

Responsibilities

Supervise Trademark Paralegals, ensuring adherence to group policies including billable hours requirements, docket management and attendance.
Conduct regular team meetings to discuss ongoing work, team issues, IP group and firm news; ensuring that team members are provided with information as needed.
Provide first level support to Trademark Paralegals regarding IP-specific questions and day-to-day operational issues.
Monitor Trademark Paralegal schedules; including ensuring regular hours are generally adhered to, providing coverage when staff are absent, processing requests for overtime or time off and approving timecards in the firm’s time management system.
Assist with training IP Services personnel as needed.
Participate in coaching, performance feedback and reviews for Trademark Paralegals.
Other duties as assigned.
Support the trademark prosecution practice; including preparation and filing of trademark and copyright applications with the USPTO and WIPO, formality documents such Assignments, Office Action Responses, Statements of Use, Affidavits of Use, Renewals and other related filings; TTAB filings, oppositions and cancellations, UDRP takedowns.
Correspond with NonUS agents regarding foreign filings and related activities.
Communicate with clients regarding status of trademark matters and related activities.
Process incoming files transferred to the firm.
Prepare reports related to trademark prosecution activities; including client status reports and docket reports.
Ensure accurate record keeping related to trademark prosecution activities; including maintaining the IP prosecution docket, saving correspondence and documents in the firm’s document management system.
Conduct international and US preliminary searches via internet and electronic databases; assist in review of search reports and other issues related to clearance of marks.
Capture billable time in the firm’s timekeeping system.
Stay up-to-date with changes to Intellectual Property rules and regulations.
Maintain excellent client service to internal and external clients.