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Organization TypeLaw Firm
Years of Experience
Date Last Verified
Trademark Paralegal The candidate, under the supervision of attorneys, will provide support for all types of US and international trademark activities. Will operate as part of a team of attorneys and support staff to provide a high level of service to both internal and external clients. Manage trademark docket for deadlines; understand docket and deadlines and action needed on each file. Conduct electronic recordation of assignment documents; review Notice of Recordation and report same to client and prepare client status reports; work with and manage large global trademark portfolios. Comprehend chain of title in U.S. trademarks and ability to prefect same. Assist with trademark clearance projects, including US screening and full searches and international screening and formal counsel searches. Prepare and file US trademark applications, including electronic filings with follow through to registration and post-registration maintenance and renewals. Coordinate with foreign counsel on international clearance, filing, maintenance and renewal matters: oversee processing of foreign associates' invoices for payment, and prepare reporting letters to client. Effect portfolio transfers and manage multi-client portfolios. Prepare and file powers of attorney and letters of instruction. Assist in trademark filing strategy discussions and due diligence. Assist with preparation and filing of responses of Office Actions.
Qualification and Experience
The candidate should have a Bachelor's degree or better. Should preferably be a certified paralegal. Must have 3+ years of trademark work experience preferably in a professional environment which includes progressive responsibility in managing trademark and litigation matters. Must have extensive knowledge of US trademark rules and procedure. Working knowledge of national laws of other countries required. Knowledge of Paris Convention and deadlines set therein and familiarity with the Madrid Protocol needed. Should be proficient with electronic research tools such as Saegis, USPTO and WIPO databases; and conduct preliminary trademark searches. Should also be proficient with USPTO electronic trademark filing systems. Experience with Intellectual Property docketing systems is needed. Knowledge of filing requirements for convention (foreign) applications is essential. Must have high level of proficiency with technology including MS Office Suite applications, Adobe Acrobat, Lexis/Nexis, Westlaw and other internet research tools. Law firm experience strongly preferred.
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