Trademark IP Specialist - San Diego, CA

Location: San Diego, CA
Date Posted: 01-17-2018
Trademark / IP Specialist - San Diego, CA

Position Summary:
The IP Specialist will be primarily responsible for providing both administrative and paralegal support to IP Attorneys in all aspects of trademark prosecution and litigation. Assists with daily workflow regarding procedures and related documentation and is responsible for reporting documentation to clients.

Duties and Responsibilities:
  • Administrative tasks include, but are not limited to, maintaining client files, scheduling client meetings, preparing cost estimates / budgets, travel reservations, entering time, prompt submission of expense reports and vendor invoices.
  • Proactively manage the trademark docket ensuring all deadlines are met in a timely manner, and docket updates are communicated to the docketing team.
  • Work closely with attorneys and paralegals to prepare and file US, WIPO and foreign trademark applications and official correspondence using the Firm’s standards and procedures.
  • Official correspondence includes, but is not limited to, statements of use, declarations, power of attorneys,assignments, replies, amendments, fee payments, extensions, affidavits, etc.
  • Provide support for TTAB opposition and cancellation proceedings and appeals, as well as international oppositions and other enforcement actions, including the collection and preparation of evidence.
  • Coordinate the execution, notarization and legalization of trademark documents including affidavits, declarations, assignments and powers of attorney for use outside of the US.
  • Record trademark registrations with US and foreign Customs offices.
  • Conduct and review trademark search reports using SAEGIS.
  • Register domain names.
  • Prepare client reporting letters, foreign attorney instruction letters, CPI status and docket reports for attorney review.
  • Communicate directly with clients, foreign attorneys, and USPTO under the direction of a trademark attorney.
  • Double check work product before presenting to attorney for review and again before sending or filing.
  • Ensure that client‐matter numbers are opened according to the IP Section’s guidelines and before work is started.
  • Experience working with CPI and First‐to‐File software is a plus. 
  • Record time daily and strive to meet billable target. Perform additional responsibilities as requested.
Successful candidate must have a minimum of 5 years of experience with an intellectual property law
firm and will have a positive attitude, be detail oriented, able to work independently, and possess strong
organizational and communication skills.

To Apply: Please email your resume for immediate consideration to:
Craig Fleck
Vice President
Chelsea Search Group
3050 Rue D'Orleans #317
San Diego, CA 92110
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