Job Description

Stoel Rives LLP has an immediate opening for a Brand Protection Administrator This position assists trademark attorneys (“practitioners”) in handling a variety of billable and operational projects or tasks related to worldwide trademark portfolios associated with clients’ brands, as well as copyright matters, depending upon the practitioner and client needs. The candidate will be responsible for working with trademark attorneys to ensure smooth, accurate, and prompt attention to client brand portfolios. This position reports to the Practice Group Leader and receives daily supervision and assignments from practitioners in the practice group.

ESSENTIAL FUNCTIONS/RESPONSIBILITIES

Trademark Administration: The Brand Protection Administrator will perform all billable non-attorney tasks relating to U.S. and worldwide trademark applications and portfolios, and will receive assignments directly from trademark attorneys for the following tasks:

Madrid Protocol applications, and foreign trademark applications; including but not limited to: application filings, extensions, statements of use, registration maintenance and renewal and recording assignments, security interests and releases.

Summarize trademark office action issues in the USPTO, WIPO and with foreign associates, and obtain attorney responses and direction for timely action.

Conduct initial trademark searches using the USPTO, WIPO, and third-party search tools, and prepare draft search reports for attorney review.

Assist with opposition, cancellation and appeals filings before the TTAB.

Assist with UDRP filings with WIPO and other arbitrators.

Review and manage brand portfolio due dates, work with docketing staff to maintain, revise and update the trademark docket, and ensure timely and prompt responses from attorneys and other internal team members.

Prepare copyright applications.

Prepare and send foreign associate correspondence regarding new applications, responses, renewals, and recording assignments, security interests and releases.

Provide and maintain electronic and paper files, as well as review and approval of all docketed deadlines.

Assist with investigation, research, USPTO informational searches and internet searches, review documents, and summarize findings as directed.

Assist attorneys with corporate due diligence including review of trademark portfolios, preparation and review of schedules, chain of title review and cleanup.

Handle new client file intakes, and new counsel transfers.

Assist with trademark litigation filings in federal and state courts (preferred, but not required).

Docket Software Responsibilities

Learn and maintain complete knowledge of the patent and trademark docketing software program (Foundation IP), train staff, assist practitioners in the use of the docket system, and maintain updated procedures requested by practitioners regarding implementation of firm docketing policies.

Document Organization

Photocopy, file, and search files for documents; prepare, index, and review documents for delivery, storage and destruction.

Other duties as assigned.

ESSENTIAL CAPABILITIES

Must possess the following capabilities: strong oral and written communication, ability to learn, outstanding attention to detail, initiative, adaptability, dependability, flexibility, client service and teamwork orientation, independent judgment, ability to independently manage tasks and deadlines, ability to focus attention for long periods of time, and work without direct supervision in a fast-paced environment. Must be comfortable with, and have the ability and interest in, delivering an accurate, high-stakes performance on a day-to-day basis. This position involves extensive client contact.

Technical/Professional Knowledge

Must have strong aptitude for computer software application programs and be able to learn quickly or have working knowledge of applicable software programs for carrying out trademark and copyright duties, including word processing, spreadsheets, databases, trademark and copyright filing programs, online services, records management systems, and docketing programs (currently, we utilize Foundation IP docketing software), in a Windows-based environment. Must be capable of using the firm’s timekeeping system to capture time for all billable tasks and to record disbursements, in a competent and timely manner to ensure proper billing for all billable tasks. Must be capable of operating a personal computer, printer, photocopier, e-fax, telephone, and other regular office equipment.

Must be comfortable using USPTO systems including TEAS, Trademark Center, and Assignment Center. Should have some experience with WIPO’s Madrid filing system.

Must demonstrate curiosity and willingness to test drive firm-approved artificial intelligence solutions to drive efficiency and accuracy in the trademark prosecution practice.

Physical and Mental Capabilities

Must be able to enter computer data for long periods of time. Must have a high level of concentration and attention to detail and have adequate addition and subtraction skills. Must be capable of reading and interpreting information in printed, handwritten or computer form, instructions, legal correspondence, memoranda, forms, documents, reference publications, or reference books.

EDUCATION & EXPERIENCE

High school degree or equivalent required; college degree preferred. Must have paralegal certificate in appropriate jurisdiction and a minimum of 5+ years’ relevant experience as a trademark paralegal, at least 2 of which should be at a major law firm. Additional trademark prosecution, docketing, and international portfolio management experience is welcome.

NORMAL WORK HOURS

This position is nonexempt and is eligible for overtime compensation. Normal work hours are between 8:30 a.m. and 5:00 p.m. Pacific Time (PT), regardless of remote work location Occasional overtime may be necessary and may be on short notice.

How You Will Live Life Well at Stoel Rives: Compensation, Benefits, and More!

The pay range for this position is $73,000 - $123,000; however, the base compensation presented to a candidate may vary based on skills and overall experience. This salary range is based on market location.

In addition to base compensation, Stoel Rives has a total rewards program that includes an annual discretionary bonus and rich benefits offerings. For example, our benefits offerings include paid family & medical leave, competitive PTO, and remote work options. We offer competitive and robust medical, dental, vision, life long-term disability, AD&D, EAP, FSA and Voluntary Life, ADD, and LTC options. We also provide a generous firm-contributed health savings account, a pre-tax transportation/parking plan including an employer monthly subsidy of $100 for individuals who work 3+ days/week in the office, and an annual contribution into the employee’s retirement plan.

No recruiters.