Vanessa Harvey
Chicago,IL
Summary
Dynamic Trademark Paralegal with extensive experience at Polsinelli PC, specializing in portfolio management, USPTO filings, and client relations. Proven ability to manage complex trademark portfolios, ensure USPTO compliance, and meet critical deadlines with precision. Skilled in preparing and submitting a wide range of filings, including statements of use, responses to office actions, and renewals. Known for clear communication, attention to detail, proactive client support, and a strong commitment to delivering results that support successful trademark prosecution and enhance client satisfaction.
Overview
32
32
years of professional experience
Work History
Trademark Paralegal
Polsinelli PC
07.2019 - 08.2022
- Assisted in intellectual property prosecution, including collecting necessary documentation, searching client's website for specimens of use, and other evidence needed for filings. Prepared and submitted electronic filings to USPTO such as new trademark applications, renewals, Sections 8&15, Extension of Time to file Statement of Use, Statement of Use, Revocations, Change of Address/Correspondence Information, Section 7 Request, and Responses to Office Actions.
- Prepared and filed Assignments, Change of Name and Security Interest documents for recording with trademark offices
- Prepared and submitted (WIPO) World Intellectual Property Organization filings
- Conducted preliminary online searches via TESS, Saegis and Corsearch for potential trademarks and reported findings to attorneys; ordered comprehensive search reports
- Provided cost estimates for filings to attorneys and clients
- Provided correspondence received from trademark offices to clients
- Reminded clients of upcoming deadlines
- Reviewed and updated daily docket, followed up with attorneys regarding filings and pending matters
- Performed due diligence
- Corresponded with foreign counsel regarding cost estimates, new filings, renewals, recording changes of ownership
- Generated and forwarded docket and portfolio reports to attorneys and clients
- Reviewed and approved invoices
Trademark Paralegal
Schiff Hardin LLP
09.2000 - 07.2019
- Prepared and submitted electronic filings to USPTO such as new trademark applications, renewals, Sections 8&15, Extension of Time to File Statement of Use, Statement of Use, Revocations, Change of Address/Correspondence Information and Section 7 Requests
- Forwarded USPTO correspondence to clients
- Prepared and submitted assignment/ change of name and security agreement recordals to USPTO and various Secretary of State offices
- Obtained Apostilles from Secretary of State and other legalization documents from various consulates
- Reminded clients of upcoming deadlines
- Reconciled and maintained USPTO deposit account
- Coordinated and managed file transfers to other parties
- Generated and forwarded docket and portfolio reports to attorneys and clients
- Onboarded all new and existing clients' domestic and international trademarks, copyrights, and domain names
- Reminded clients of upcoming deadlines
- Ran TESS searches for attorneys and clients
- Monitored all firm's U.S. trademark emails and hardcopy mail using Microsoft Outlook software
- Reviewed daily docket and followed up with attorneys regarding filings and pending matters
- Performed due diligence
- Corresponded with foreign counsel to obtain cost estimates, and provided renewal instructions and other information
- Maintained firm trademark database and client portfolios using CPI software including docketing incoming correspondence from USPTO
- Prepared and submitted filings to Secretary of State Offices
Trademark Assistant
Hill & Simpson
12.1999 - 08.2000
- Obtained trademark billing numbers
- Docketed US trademark correspondence received from USPTO
- Proofed correspondence received from USPTO and forwarded correspondence to clients
- Prepared requests to correct documents received from USPTO
- Prepared and forwarded renewal reminder letters to clients
- Monitored status for potential opposition of various trademarks on USPTO website
- Contacted foreign counsel regarding invoices/statements
- Generated and distributed dockets to attorneys
Assistant Director of Education
Illinois Bankers Association
06.1992 - 12.1999
- Managed seminar budget
- Selected and secured venues, signed contracts, selected menus, provided venue with headcount
- Recruited speakers
- Negotiated speaker honorariums
- Solicited attendees
- Monitored attendance numbers
- Compiled materials for seminars and conferences
- Attended and coordinated seminars and conferences at venue
- Worked with marketing department to prepare seminar brochures
- Answered calls from potential and registered attendees with questions about education programs
Administrative Assistant
Illinois Bankers Association
06.1990 - 06.1992
- Generated reports of former attendees for marketing of education programs
- Tracked Continuing Education Credits for attendees of seminars, schools, and conferences
- Maintained Executive Director's departmental calendar
- Generated attendee lists, printed name tags, copied program materials for conferences, seminars and schools
- Tracked mail and payments of registered attendees
- Contacted registered attendees to inform them of cancelled programs
- Answered calls from potential and registered attendees with questions about education programs
Education
Associate of Applied Science -
Robert Morris College
Chicago, ILSkills
- Portfolio management
- Client communication
- Microsoft Outlook and Word, Carpe Diem, Computer Packages, Inc
Timeline
Trademark Paralegal
Polsinelli PC
07.2019 - 08.2022
Trademark Paralegal
Schiff Hardin LLP
09.2000 - 07.2019
Trademark Assistant
Hill & Simpson
12.1999 - 08.2000
Assistant Director of Education
Illinois Bankers Association
06.1992 - 12.1999
Administrative Assistant
Illinois Bankers Association
06.1990 - 06.1992
Associate of Applied Science -
Robert Morris College