Legal Staff Paralegal in Charlotte, NC

Profile

Trademark Paralegal Duties: Support trademark attorneys, by engaging in all aspects of US and OUS (Outside the US) trademark prosecution, as well as handling special projects and other assignments as needed. Manage the filing and prosecution of US and OUS trademark applications, including finalizing and perfecting all descriptions of goods and services with the client and identifying the intended countries/jurisdictions where the mark will eventually be registered; also prepare and file Statements of Use, Oppositions, Renewals, Affidavits, Assignments, and related documents. Proactively communicate with internal clients and attorneys, as well as with US and OUS outside counsel. Monitor Trademark Docket and assure that all docketed matters are timely handled. Assist Docketing and Database Paralegal in managing and maintaining the Trademark Docketing System, by communicating real-time updates and other relevant information. Conduct and analyze trademark searches, including performing initial knockout searches to identify identical or nearly identical names that are already registered and are close to the intended use or are already in use on the Internet; prepare clearance reports. Review content of office actions and formulate recommendations for responding to same; communicate with responsible attorney and follow-up with client to confirm the response strategy once the responsible attorney has confirmed such response. Prepare trademark reports and spreadsheets for clients. Review trademark watch notices. Ensure the client responsible for each mark is identified and recorded in the trademark database along with contact information for future follow-up reference; be responsive to any organizational changes resulting in a change to the responsible client and ensure such change is recorded Learn and make use of standard operating procedures (SOP) that have been identified for all trademark work; advise when a change to such a SOP is needed; and identify where and the content of other SOPs that are required. Provide guidance to clients regarding status and proper usage of trademarks (including proper marking, correspondence between the intended use and description of goods/services, etc.). Prepare budget forecasting and monitoring spreadsheets.

Qualification and Experience

Qualifications: Bachelor’s degree and/or Paralegal certificate is preferred. 3+ years of experience as a trademark paralegal in a law firm or corporate setting. General knowledge of US and OUS trademark law, policies, and processes. Excellent written and oral communication skills. Preferred: Ability to manage multiple projects at once. Highly organized and responsive. Ability to work independently, but proactively seeks guidance when needed. A team player, able to build relationships across functions.

Additional info

Requisition id: 292

Company info