A trademark paralegal is someone who works on trademark legal matters under the supervision of licensed trademark attorneys. Trademark paralegals (also known as trademark legal assistants) do not practice law, as they are not licensed attorneys, but they help in many aspects of trademark matters. Trademark legal work is diverse. Trademark prosecution attorneys apply for trademark protection for names and logos with the United States Patent and Trademark Office. Trademark litigators are trial lawyers who handle court cases involving who has rights to various trademarks and other trademark matters. Trademark lawyers rely on trademark paralegals to assist them as much as possible in helping get the work done within the bounds of legal and ethical rules.
Here are a few sample trademark paralegal job descriptions:
The candidate will prepare and file U.S. trademark applications, including electronic filings with follow through to registration. Should have 5+ years of Trademark Prosecution experience to work for this Beverly Hills law firm, with extensive knowledge of U.S. trademark rules and procedures and working knowledge of the national laws of other countries.
The candidate will assist attorneys in the clearance and prosecution of U.S. and foreign trademarks. Will be responsible for handling all aspects of trademark applications, including filings with the USPTO; performing preliminary trademark searches. Drafting assignment documents for recordation and meeting country specific requirements, such as notarization and legalization of documents; drafting legal correspondence; assisting on due diligence reviews. Should have 5+ years of experience as a trademark paralegal; knowledge of USPTO procedures; extensive experience in conducting trademark clearance searches and in U.S. and foreign filings; proficiency in computerized docketing systems and MS Office.
The candidate should have ABA Certificate or equivalent.
The candidate will join the intellectual property and technology practice. Will handle a range of responsibilities as relate to trademark prosecution. Duties include preparing and filing electronic trademark applications, correspondence with the USPTO and foreign counsel, and ordering and reviewing searches. A Bachelor's degree is required. Must have 7+ years of experience. Must be comfortable juggling many tasks in a fast paced environment.
Interim Trademark Paralegal
The candidate role is likely to entail: Identifying trademarks; Checking trademark rights; Utilising spreaksheets to check trademark clearnaces; Instructing other teams of clearances. The role is to support an increase in the workload of the Trademark team due to the continued growth of the company. Should have previous legal experience, preferably within trademarks, and has achieved good academics.
The candidate should have BA/BS Degree. Must have 5+ years of international and domestic trademark prosecution experience needed together with docketing experience. CPi trademark software experience preferred.
Senior Trademark Paralegal
The candidate will be responsible for assisting with all facets of the trademark prosecution process. Should possess 7+ years of trademark experience, can work autonomously, and has the ability and demonstrated track record in conducting, reviewing and analyzing Saegis trademark searches in U.S. and International databases; reviewing, analyzing, and reporting on comprehensive trademark searches from outside trademark search vendors such as CT Corsearch and ThomsonReuters; preparing and assisting in the prosecution of trademark applications, communicating with the PTO and foreign associates, and maintaining clients' portfolios; in addition to proficiency with use of the PTO's online filing systems, including TEAS, the Assignment Branch and the TTAB (Trademark Trial and Appeal Board). Should have a BA/BS degree and must possess excellent oral and written communication skills, be detail-oriented with the ability to manage multiple priorities and track extensive details. Must have the ability to establish and maintain good working relationships with personnel and to handle confidential information sensitively and discreetly. Overtime will be required, occasionally on short notice.
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