Trade Mark Formalities Administrator

Trade Mark Formalities Administrator

Career Legal



30 June 2017

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An exciting opportunity for an experienced Trade Mark Formalities Administrator to join this ever growing Intellectual Property department of this highly regarded firm. The successful candidate will have a wealth of trade mark formalities and administration. You will have worked within a team environment servicing large multi-national trade mark portfolios and be accustomed to working to tight deadlines with each of IPOs, overseas law firms/trade mark attorneys, internal and external clients.

Key responsibilities will include

Preparation of forms and related documentation for filing trade mark applications; oppositions; revocation/cancellation actions; appeals; renewals; assignments; licences; changes of name and other title details.

Preparation of Instructions to foreign TM Attorneys and related documentation for filing trade mark applications; oppositions; revocation/cancellation actions; appeals; renewals; assignments; licences; changes of name and other title details.

Drafting specifications for trade mark applications and obtaining other formal details required to file or amend trade mark applications.

Reporting to clients details of new trade mark applications, publication notices, registration and renewal certificates.

Reporting to clients the timetable of events, deadlines and cooling off periods relating to oppositions and other inter parte actions.

Filing responses to office actions online at UK IPO and EUIPO.

Supporting fee earners in responses to office actions and in contentious IP Office proceedings, as required on a case by case basis – including preparation of evidence and submissions

Supporting fee earners in searches – including ordering and organisation of trade mark searches and related search programme administration, report preparation and preliminary research

Trade Mark Records management - use of the firm's database to ensure all activity is docketed and able to be audited at all times, including managing own diary of reminders.
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