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

Current Employees apply HERE

Current Contingent Workers apply HERE

US and Puerto Rico Residents Only:

Our company is committed to inclusion, ensuring that candidates can engage in a hiring process that exhibits their true capabilities. Please click here if you need an accommodation during the application or hiring process.

We are an Equal Opportunity Employer, committed to fostering an inclusive and diverse workplace.  All qualified applicants will receive consideration for employment without regard to race, color, age, religion, sex, sexual orientation, gender identity, national origin, protected veteran status, or disability status, or other applicable legally protected characteristics.  For more information about personal rights under the U.S. Equal Opportunity Employment laws, visit:

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We are proud to be a company that embraces the value of bringing diverse, talented, and committed people together. The fastest way to breakthrough innovation is when diverse ideas come together in an inclusive environment. We encourage our colleagues to respectfully challenge one another’s thinking and approach problems collectively.

Learn more about your rights, including under California, Colorado and other US State Acts

U.S. Hybrid Work Model

Effective September 5, 2023, employees in office-based positions in the U.S. will be working a Hybrid work consisting of three total days on-site per week, Monday - Thursday, although the specific days may vary by site or organization, with Friday designated as a remote-working day, unless business critical tasks require an on-site presence.This Hybrid work model does not apply to, and daily in-person attendance is required for, field-based positions; facility-based, manufacturing-based, or research-based positions where the work to be performed is located at a Company site; positions covered by a collective-bargaining agreement (unless the agreement provides for hybrid work); or any other position for which the Company has determined the job requirements cannot be reasonably met working remotely. Please note, this Hybrid work model guidance also does not apply to roles that have been designated as “remote”.

The Company is required to provide a reasonable estimate of the salary range for this job in certain states and cities within the United States. Final determinations with respect to salary will take into account a number of factors, which may include, but not be limited to the primary work location and the chosen candidate’s relevant skills, experience, and education.

Expected US salary range:

Available benefits include bonus eligibility, long term incentive if applicable, health care and other insurance benefits (for employee and family), retirement benefits, paid holidays, vacation, and sick days. A summary of benefits is listed here.

San Francisco Residents Only: We will consider qualified applicants with arrest and conviction records for employment in compliance with the San Francisco Fair Chance Ordinance

Los Angeles Residents Only: We will consider for employment all qualified applicants, including those with criminal histories, in a manner consistent with the requirements of applicable state and local laws, including the City of Los Angeles’ Fair Chance Initiative for Hiring Ordinance

Search Firm Representatives Please Read Carefully 
Merck & Co., Inc., Rahway, NJ, USA, also known as Merck Sharp & Dohme LLC, Rahway, NJ, USA, does not accept unsolicited assistance from search firms for employment opportunities. All CVs / resumes submitted by search firms to any employee at our company without a valid written search agreement in place for this position will be deemed the sole property of our company.  No fee will be paid in the event a candidate is hired by our company as a result of an agency referral where no pre-existing agreement is in place. Where agency agreements are in place, introductions are position specific. Please, no phone calls or emails. 

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Relocation:

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*A job posting is effective until 11:59:59PM on the day BEFORE the listed job posting end date. Please ensure you apply to a job posting no later than the day BEFORE the job posting end date.