IP- Trademark Renewal Specialist

Job Description

The Office of General Counsel is seeking an experienced Trademark Renewal Specialist to provide trademark maintenance and docketing support to the Intellectual Property (IP) organization. Primary responsibility is to manage the end-to-end trademark renewal process for a large multinational pharmaceutical portfolio, ensuring that all requirements and deadlines are met to keep the portfolio active, updated and enforceable. This position offers flexible hybrid office schedule based in Rahway, NJ.

Job responsibilities include but are not limited to:

• Work with internal stakeholders to prepare annual Trademark Renewal Decision List in accordance with trademark renewal vendor timelines

• Liase with trademark agents and trademark renewal vendor on day-to-day trademark renewal matters

• Docket renewal actions in docketing system and trademark renewal vendor portal as appropriate

• File Power of Attorney (POA), statements of use, affidavits of use, and renewal instructions, and provide change of name/assignment documents as needed to support renewals

• Request advertising and packaging materials to ensure proper use of trademarks and facilitate document legalization

• Review data discrepancy reports, gather specified information and/or documents, and submit necessary documentation to resolve

• Electronically file relevant renewal-related documentation into document management system in accordance with established procedures

• Review amended trademark rules and docketing procedure to ensure all maintenance requirements are met

• Assist in operational excellence initiatives making appropriate recommendations for work processes as needed

Commute/Location:

• This role is based at our Headquarters site in Rahway (NJ), with a Hybrid setup (combination of 3 days in-office & 2 days off-site/remote). This position cannot be 100% remote.

Position Qualifications Required Experience and Skills:

• Minimum of three (3) years of trademark renewal experience in a law firm or in-house legal department 

• High School degree or equivalent required

• Substantive knowledge of US and foreign trademark prosecution principles, strategies, and technology

• Advanced proficiency with docketing systems and trademark renewal vendor portals

• Advanced proficiency utilizing foreign and domestic Patent and/or Trademark Office websites and other paid database platforms to conduct research and locate data

• Advanced Proficiency in MS Office Suite (Outlook, Word, Excel, SharePoint) and Adobe Acrobat

• Experience with notarization, legalization, and an attestation/apostille

• Experience working with global IP portfolios

• Ability to independently handle routine legal issues/documents with employees and third parties under direction of attorney as appropriate

• Ability to independently solve problems that arise within job responsibilities and expectations

• Ability to independently develop legal solutions for business issues with minimal supervision/support 

• Accuracy & attention to detail in analyses and communications

• Ability to speak and write clearly and succinctly including on complex legal issues, and ability to craft effective communications that emphasize key points and ideas 

• Effective time management to meet deadlines including project management skills, prioritization, consistent delivery of commitments, and ability to organize information and build upon ideas of others

• Autonomy on routine tasks as well as projects of greater complexity, and ability to recognize need for and seek further direction of attorney

• Discrete in handling sensitive and confidential information, and a high level of integrity    

• Clear motivation and focus on achieving measurable, tangible results

• Willingness to adopt change

• Notary Public Commission (can be obtained after being hired into the role)

Preferred Experience and Skills:

• Associate degree, or Paralegal certificate preferred

• Experience in the pharmaceutical or healthcare industry

• Experience with Thomson IP Manager (TIPMS)

• Experience with Corsearch

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