Summary
Overview
Work History
Education
Skills
Timeline
Generic

Catherine Summerville

Centreville,VA

Summary

Experienced trademark specialist with a demonstrated history, focused on providing excellent internal and external customer service. Detail oriented and comfortable working in a team or independently.

Overview

34
34
years of professional experience

Work History

Trademark Specialist

Nixon Peabody LLP
08.2015 - 07.2023
  • Manage daily dockets of assigned attorneys to ensure all deadlines are met, including review and annotation of daily docket for assigned timekeepers; inform docketing specialists of status of matters
  • Review incoming emails and docket all deadlines for domestic and foreign matters; provide answers to the docket in Practicelink docketing system
  • Prepare docket and status reports for clients from IP Manager
  • Upload documents and update WebTMS docket
  • PTO document filing (applications, extensions of time, statements of use, Sections 8, 9 & 15, renewals)
  • Provide technical and administrative support to two trademark attorneys
  • Save correspondence in Netdocs
  • Prepare reminders and client correspondence
  • Prepare new business intakes, including submitting new client, matter and pro bono intake requests
  • Draft reporting correspondence for all aspects of domestic and foreign trademark prosecution
  • Check status of trademark applications and registrations from TSDR and other country databases
  • Prepare foreign trademark filing estimates from Global IP

Trademark Specialist

Kelly IP, LLP
12.2014 - 07.2015
  • Responsible for a variety of administrative tasks for one partner, one associate and three trademark legal assistants, i.e.:
  • Keep attorney apprised of due dates, calendar appointments, make travel arrangements, prepare trademark prosecution letters, make bank deposits, pay bar dues, update client and firm-related databases, edit prebills and proof final bills sent to clients

Trademark Specialist

Oblon
11.1989 - 04.2014
  • Supported partners and associates in the Trademark Department
  • Prepare and electronically file trademark prosecution and litigation documents (including assignments) on TEAS and ESTTA, along with supporting documentation and requisite filing fees
  • Review and clear U.S. and international dockets
  • Docket new trademark matters and further prosecution dates as needed
  • Prepare customized docket reports for clients and attorneys as needed
  • Advise attorneys of docket-related issues track deadlines associated with international and domestic trademark applications and registrations
  • Check and update the status of U.S trademark cases (TSDR and TESS) and international intellectual property offices when needed
  • Draft and finalize documents and client correspondence (U.S. and international)
  • Save documents in document management system (iManage)
  • Timekeeping, review and edit prebills and final bills using CMS
  • Process and approve associate invoices for payment
  • Open, maintain and close files and prepare files for transfer;
  • Maintain and update U.S. and international trademark prosecution records in physical file and with docketing department
  • Prepare PowerPoint presentations for internal and external use
  • Transcribe audio files using Big Hand as well as recorded tapes
  • Expense reporting with Chrome River
  • Other administrative tasks including payment of attorney Bar dues, travel arrangements; and assist other IP specialists in overflow work

Education

Bachelor of Science - Business Administration (Marketing)

Clarion University of Pennsylvania
Clarion, PA

Trademark Paralegal Certificate

IPLegalEd
10.2023

Skills

  • Docketing systems: WebTMS, IPM, Practicelink, OPTMS (Oblon’s in-house system)
  • Microsoft Word, Excel, Outlook, PowerPoint
  • Timekeeping/Billing: CMS, TABS and Chrome River
  • Document management: IManage; Netdocs
  • Adobe Acrobat 8
  • Typing speed: 70 - 75 wpm
  • Big Hand digital dictation / transcription
  • Proofreading

Timeline

Trademark Specialist

Nixon Peabody LLP
08.2015 - 07.2023

Trademark Specialist

Kelly IP, LLP
12.2014 - 07.2015

Trademark Specialist

Oblon
11.1989 - 04.2014

Bachelor of Science - Business Administration (Marketing)

Clarion University of Pennsylvania

Trademark Paralegal Certificate

IPLegalEd
Catherine Summerville