Nixon Peabody LLP is currently seeking a Trademark Specialist for our Trademark Department in our Rochester office. The Trademark Specialist is responsible for providing technical and administrative support to attorneys, paralegals, and clients in all aspects of trademark and IP practice management. This position reports to the Manager, IP Support Staff. A hybrid work schedule is available for this position.

A career at Nixon Peabody is the opportunity to do work that matters. It’s the chance to use your knowledge to shape what’s ahead. To share, to innovate, to learn at a firm that taps the power of collective thinking.

We’ve created a dynamic, energizing environment that promotes success for our clients and each other. We offer fast growth, connectedness and training in business as well as law. And our rigorous standards assure you are part of a diverse team of top talent at every turn.

If you’re someone who’s looking toward the future, we’d love to hear from you.

Location: Rochester, NY

Responsibilities:

• Manage daily dockets of assigned attorneys, working closely with timekeepers to ensure all deadlines are met daily. This includes reviewing and annotating daily docket for the assigned timekeepers and keeping the IP Docket Specialist informed.
• Manage new business intakes. This includes submitting new client, matter and pro bono intakes requests, complete billing information and track status.
• Handle phone, email and calendars for assigned timekeepers, ensuring all details are anticipated, arranged and well-coordinated.
• Prepare and file documents related to prosecution and/or maintenance of US and foreign trademark.
• Draft trademark status reports for clients, draft client reporting letters when original certificates of registration are received and mail out after docketing and approval.
• Communicate with foreign associates, including foreign filing instruction letters and obtain and send copies of registration certificates or other evidence requested.
• Assist with pulling applications/registrations and other PTO information from the United Stated Patent and Trademark Office (USPTO) website.
• Report correspondence accurately and timely with accordance with firm/client guidelines. Respond to client inquires and requests for information and provide status reports as needed.
• Maintain knowledge of the status of ongoing client matters and keep up-to-date contact lists, anticipate next steps and prepare for them in advance.
• Maintain accurate electronic files in accordance with firm/practice group guidelines and procedures.
• Assist with processing incoming/outgoing file transfers.
• Close out files that have been abandoned and close in Aderant.
• Promptly perform administrative tasks (i.e. expense reimbursement, business development, etc.) in InterAction, Chrome River and other firm applications.
• Assist with monthly billing and provide documentation and edits.
• Perform other duties as assigned.

To perform this job successfully, you must be able to perform each essential job responsibility listed above, satisfactorily. Nixon Peabody retains the right to change or assign other duties to this position. The requirements listed below are representative of the skills and abilities required.

Requirements:

• 3-5 years of trademark experience, preferably within a law firm or professional services environment.
• High School Diploma or equivalent required. College Degree preferred.
• Solid understanding of U.S. and foreign trademark filings and prosecution procedures
• Technology savvy with a strong knowledge working with Microsoft Office
• Exceptional organizational skills with great attention to detail
• Familiarity with trademark prosecution procedures.
• Solid understanding of trademark rules of practice (37 CFR) and with some trademark clearance searching, copyrights, domain name registrations and TTAB proceedings.
• Familiarity with USPTO Trademark systems (i.e. TEAS, the Assignment Branch and the TTAB).
• Proficiency with windows-based software applications, including Microsoft Office Suite and the firms document management system (i.e. NetDocuments).
• Exceptional interpersonal and communication skills, both verbal and written.
• Strong attention to detail with the ability to navigate multiple tasks and deadlines.

Working Conditions:

• Work is generally performed within an office environment, with standard office equipment available and with no exposure to hazardous conditions caused by noise, dust, or other factors.

Physical Demands:

• Ability to lift up to 15 pounds.
• Must be able to remain in a stationary position 50% of the time.
• High frequency of computer keyboarding and viewing a computer monitor.

Nixon Peabody LLP is an Equal Opportunity / Affirmative Action Employer: Disability / Female / Gender Identity / Minority / Sexual Orientation / Veteran. Pursuant to the San Francisco Fair Chance Ordinance and the Los Angeles Fair Chance Initiative, we will consider for employment qualified applicants with arrest and conviction records.

To comply with Federal law, Nixon Peabody participates in E-Verify. All newly-hired employees are verified through this electronic system established by the Department of Homeland Security (DHS) and the Social Security Administration (SSA) to confirm their identity and employment eligibility. Please refer to the Notice of E-Verify Participation and the Right to Work posters on the Nixon Peabody Careers page for more information

Job Type: Full-time

Benefits:

• 401(k) matching
• Health insurance

Schedule:

• Monday to Friday

People with a criminal record are encouraged to apply

Work Location: Hybrid remote in Rochester, NY 14604

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