Trademark Specialist

  • 455 N Cityfront Plaza Dr, Chicago, IL 60611, USA
  • Full-time

Job Description

Crowell & Moring LLP is an international law firm with offices in the United States, Europe, MENA, and Asia that represents clients in litigation and arbitration, regulatory and policy, and transactional and corporate matters. The firm is internationally recognized for its representation of Fortune 500 companies in high-stakes litigation and government-facing matters, as well as its ongoing commitment to pro bono service and diversity, equity, and inclusion.

Job Summary
The Trademark Specialist is assigned to specific matters, clients, projects and/or specified routine activities and determines and prepares appropriate work product with minimal attorney supervision. 

Job Responsibilities
•    Successfully manages a very heavy trademark (and/or patent) docket including preparation of new applications, trademark renewals or annuities, and all other prosecution papers and documents for filing in the US and in Non-US jurisdictions in coordination with foreign agents.
•    Actively participates in risk management by meeting all internal and statutory due dates, careful review of file histories and client instructions, accurate preparation of documents, file maintenance/handling procedures, timeliness/responsiveness, and overall quality of service.  
•    Prepares draft reporting letters and responses to Office Actions for attorney review, which includes formulation of arguments against refusals and/or rejections. 
•    Coordinates with foreign (patent and) trademark agents to obtain and enforce (patent and) trademark rights in non-US jurisdictions. 
•    Assists in infringement, opposition, and related proceedings.
•    Conducts internet searches for trademark availability. 
•    Maintains an understanding of legalization procedures in city, county, state and country; corresponds with court and state officials; and prepares documents including appropriate fees, when necessary.
•    Reviews agent and vendor invoices in compliance with firm’s policies and procedures.
•    Prepares formal assignments and agreements for (patent and) trademark matters.
•    Prepares (patent and) trademark status summary reports.
•    Prepares worldwide cost estimates for filing and maintenance of (patents and) trademarks.
•    Handles non-routine intellectual property related projects as needed.



The position requires a Bachelor’s Degree in a related field.  Equivalent training and experience may substitute for education.

The position requires a minimum of three (3) years of increasingly responsible, directly related experience during which knowledge, skills and abilities applicable to the position were demonstrated.

Knowledge, Skills and Abilities
•    Demonstrated knowledge of domestic and international intellectual property prosecution law.
•    Demonstrated ability to prepare a heavy volume of accurate and complete documents that meet US and Non-US patent and trademark office requirements.
•    Demonstrated ability to identify and meet deadlines based on patent and trademark office correspondence, client instructions, and other documents, and manage associated risks by coordinating with attorneys to file in advance of due dates whenever possible.
•    Demonstrated intermediate PC knowledge, MS Word, PDF conversion tools, MS Outlook, and document management software. 
•    Intermediate knowledge related to use of equipment including scanners, copiers, and facsimile machines. 
•    Basic knowledge of MS Excel, PowerPoint, computerized docketing, and billing systems.
•    Demonstrated ability to conduct legal research regarding the rules and procedures for US and Non-US intellectual property law.
•    Demonstrated ability to organize and prioritize work in a dynamic and complex environment to meet deadlines and daily requirements.
•    Demonstrated ability to communicate persuasively, both orally and in writing.
•    Ability to analyze and interpret information from a variety of sources, apply critical and creative thinking to draw conclusions or develop solutions to complex problems. 
•    Proven leadership capabilities in intellectual property related areas.
•    Ability to provide quality client service to both internal and external contacts, regarding matters of a complex nature. Requires patience, creativity and discretion.
•    Must possess the interpersonal skills necessary to communicate information with tact and courtesy. 
•    Follow instructions effectively from a diverse group of clients, attorneys and staff.
•    Flexibility regarding work schedule and availability for overtime as requested to accommodate client and attorney business needs. 
•    Demonstrated ability to work effectively both independently and with others in a cooperative, enthusiastic and friendly manner to accomplish position functions and participate in team efforts. 
•    Demonstrated ability to accurately type 70 wpm.
•    Ability to retrieve and distribute files, written documents or office supplies weighing up to 12 pounds and ability to retrieve and replace objects from shelves of up to 6 feet high.

Additional Information

Crowell & Moring LLP offers a competitive compensation and comprehensive benefits package which includes progressive options such as back up child care, wellness programs, cultural events and social activities. We take great pride in our positive, friendly culture that rewards hard work and success, at the same time recognizing the importance of family and community service.

EOE m/f/d/v
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