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Organization TypeLaw Firm
Years of Experience
Date Last Verified
Paralegal - Trademark Duties: Handle all aspects of U.S. trademark prosecution and maintenance; preparing & filing trademark applications; preparing responses to PTO office actions; preparing and filing renewals and declarations of use; collecting evidence of use for prosecution, maintenance and conflict matters; drafting client correspondence; recording assignments and other documents; copyright searching and filing. Instruct and work with foreign counsel on clearance, trademark filings, office actions, renewals and other prosecution and conflict matters. Prepare filings for Trademark Trial and Appeal Board matters, docket and track deadlines. Perform and review trademark and copyright searches. Investigate possible infringements. Manage trademark docket and deadlines. Generate and edit status reports. Perform internet research projects and other special projects on an as needed basis. Accurately and completely record billable time spent and tasks performed in accordance with firm policy and client-imposed billing protocol, enter and release time promptly in compliance with firm’s announced deadlines. Accurately and promptly submit records of hours worked in compliance with firm policy and applicable employment law. Provide support to trademark practitioners in other offices as needed. Identify and documenting standard operating procedures.
Qualification and Experience
Qualifications: Bachelor’s degree and completion of paralegal program of study, or clear demonstration of equivalent knowledge and skill. 5+ years’ experience as intellectual property/trademark paralegal, with a significant focus on trademark prosecution and/or trademark enforcement. Highly developed skill in time and task management, with ability to organize assignments, work calmly under pressure and meet deadlines. Highly developed attention to detail in striving for perfection in work product and client service. Post-college level writing and oral communication skills, with ability to convey substantive content clearly and concisely. Ability to perform complex tasks and work independently. Ability and desire to exercise initiative and independent responsibility. Ability and desire to work closely and collaboratively with colleagues. Ability to protect client confidentiality in compliance with rules of ethics and firm policy. Availability and willingness to travel, if needed. Availability and willingness to work extended or flexible hours as needed to accommodate client needs. Advanced proficiency in the use of Microsoft Office computerized business applications (Word, Excel, and Outlook) for the creation and editing of complex documents, spreadsheets, and electronic mail. Proficiency in the use of computerized legal research and document retention databases for performance of fact and legal research and effective management of complex evidence and case files. Advanced proficiency in docketing software.
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