Los Angeles Metropolitan Area
• Conduct and analyze U.S. and global ownership and preliminary searches for proposed marks utilizing the internet, Whois DomainTools and SAEGIS • Independently analyze and prepare complex and confidential client correspondence reporting on the status of trademarks (e.g., filed Applications and Declarations, Notices of Publication, Allowance and Acceptance), Office Actions, Registration Certificates • Prepare, file and oversee hundreds of complex domestic and international Trademark Applications (including via the Madrid Protocol), Statements of Use, Responses to Office Actions, Requests for Reconsideration, Notices of Appeal, Section 8&15 and Section 8&9 Declarations • Coordinate with foreign counsel on trademark searches, prosecution and maintenance matters, customs recordals and renewals, complaints with respect to custom seizures, possible trademark oppositions for marks that were referenced in watch notices, existing trademark enforcement matters (opposition, cancellation and invalidation actions) in multiple international jurisdictions • Direct efficient docketing of all USPTO and foreign trademark prosecution, enforcement and maintenance deadlines, including matters relating to domain and customs recordals and renewals • Adept at prioritizing and multitasking to ensure complete coverage of a high volume workload under tight time frames • Manage clients’ global trademark portfolios • Create and implement strategies to protect house marks by reviewing global trademark portfolios and conducting trademark gap filing analyses • Perform status and general research utilizing the internet, SAEGIS, PACER, Westlaw, Whois DomainTools, USPTO and U.S. Copyright Office databases • Develop and execute enforcement strategies to prevent the dilution of client trademarks through preparation and filing of UDRP Complaints with WIPO and Notices of Opposition and Petitions to Cancel with the TTAB • Prepare, file and oversee copyright applications with the U.S. Copyright Office