Job Description

Position Description:

The Office of General Counsel is seeking an Associate Director, Trademark Operations to provide docketing and legal operations support to the Intellectual Property (IP) organization. Primary responsibilities are to oversee the Trademark Operations team, including operations and workflow; partner with the Trademarks & Copyrights group to develop and enforce best practices and process improvements; and lead and manage strategic projects, including assignment recordation and portfolio intake and transfer activities, in support of the company’s mission to deliver life changing products. This position has a flexible hybrid office schedule based in Rahway, NJ. 

A successful candidate should possess strong knowledge of trademark docketing, demonstrated change management skills and strategic planning skills to strengthen the company’s overall trademark procurement practices from clearance to enforcement, and beyond. This is a people manager role and is responsible for managing two trademark support professionals.

Job responsibilities include but are not limited to:

• Actively participate as member of the Trademark Operations team to accomplish established goals and meet all deadlines

  • Accurately create and maintain trademark and contentious matters records within the docketing system

  • Accurately enter prosecution deadlines into docketing system in accordance with established procedures

• Develop and implement policies and procedures related to trademark docketing to ensure that they are streamlined, efficient, and tasks are assigned appropriately

• Oversee renewal management and deadline monitoring, ensuring that all renewal payments are made on time to maintain the validity of trademark rights

• Identify training needs and develop and conduct training sessions for team members on docketing procedures, best practices, and new processes

• Actively engage with the Trademarks & Copyrights group to develop a deep understanding of their needs and align operational initiatives with organizational priorities

• Design and lead strategic and process improvement initiatives to drive team efficiency and effectiveness

• Maintain up-to-date knowledge of trademark industry rules and regulations

• Assess the potential impact of industry and departmental changes on workflow and prepare detailed procedures

• Review and triage acquired portfolios, audit file histories, and docket bibliographic details and accompanying deadline information in docketing system

• Design and generate general and/or specialized reports upon request

• Leverage cross-functional relationships to influence the development and adoption of new processes/technologies to make a significant impact across the broader legal organization

• Participate in industry/corporate legal operations roundtables, user conferences, industry benchmarking studies to provide best practices and recommendations to Senior Leadership

• Work collaboratively with the IP Systems Administrator on the following:

  • Database maintenance activities, including status checks and data validation, to minimize data discrepancies that would prevent accurate renewal payments

  • Ensuring appropriate testing of law updates, system releases, and enhancements

  • Assessing and designing new process workflows or data-related projects and improvements

  • Assessing and designing custom forms, emails and automated reporting

  • Designing and implementing controls to ensure accuracy and integrity of data

  • Identifying problem areas, and assisting with troubleshooting issues/problems; assisting in implementing new controls as needed

  • Identifying training opportunities and train trademark staff on use of software and communicating any changes in software to appropriate stakeholders

Position Qualifications:

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.

Education Minimum Requirement:

High School degree or equivalent required

Bachelor’s degree, Associate degree, or Paralegal certificate preferred

Required Experience and Skills:

• Five (5) years of progressive trademark docketing experience in a law firm or corporate legal department

• Three (3) years of people management or supervisory experience, including strong team building, recruiting, staff development, training, and mentorship

• Experience in legal operations, including strategic planning, project management, financial management, and technology implementation

• Advanced proficiency of foreign and domestic trademark legal concepts and practices, including experience docketing foreign and domestic contentious matters as well as copyright, customs recordation, domain name registrations, and UDRP proceedings

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

• Advanced proficiency with evaluating trademark file histories with strong ability to audit trademark records to verify critical details

• Working knowledge using and maintaining common IP docketing systems; including appropriate system policies, procedures, controls, and U.S./WIPO Trademark rules

• Strong computer skills, with an advanced proficiency with MS Office Suite (Outlook, Word, Excel and SharePoint) and Adobe Acrobat Pro

• Strong project management skills, including the ability to lead and oversee complex large-scale legal projects, allocate resources, delegate tasks, monitor progress, overseeing the work of staff, and ensure that projects are completed within scope, on time, and within budget

• Ability to work in a fast-paced environment with demonstrated ability to coordinate multiple competing tasks and demands and work under tight deadlines

• Ability to exercise discretion and independent judgment in the performance of responsibilities and the aptitude for effective and creative problem solving

• Excellent communications and writing skills; ability to present complex ideas succinctly and clearly

• High level of interpersonal skills to handle sensitive and confidential situations with poise, tact, and diplomacy

• Ability to maintain knowledge of trends, developments, legislative and USPTO/WIPO rulings impacting practice procedures. Strong change management leadership.

Preferred Experience and Skills:

• 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:

EEOC Know Your Rights

EEOC GINA Supplement​

Pay Transparency Nondiscrimination

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:

$126,500.00 - $199,100.00

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. 

Employee Status:

Regular

Relocation:

VISA Sponsorship:

Travel Requirements:

Flexible Work Arrangements:

Hybrid

Shift:

Valid Driving License:

Hazardous Material(s):

Job Posting End Date:

01/27/2025

*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.