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Organization TypeLaw Firm
Years of Experience
Date Last Verified
IP Trademark Paralegal Duties: Under the supervision of lawyers from the IP Department, will provide support for all levels of the trademark process. Will operate as part of a team comprised of lawyers and staff with the goal to provide high level service to both internal and external clients. Manages the trademark prosecution and enforcement matters for many different clients. Perform preliminary “knock out” trademark searches; compile and organize information identified by trademark attorneys from preliminary and full searches in letters to clients summarizing results. Prepare U.S. trademark applications, renewals, extensions of time, Section 8 & 15 declarations and other documents for prosecution and maintenance of trademarks and filing such documents electronically with the USPTO. Prepare and electronically record name changes, assignments, security interests and releases with the USPTO. Assist with due diligence actions, including review of trademark and copyright documents, chain of titles, and security interests and releases. Correspondence with foreign associates regarding international trademark applications, prosecution and maintenance, as well as preparation of Power of Attorney documents, and legalization of documents. Assist attorneys in obtaining and organizing evidence in support of responses to office actions. Preparing and providing docket and status reports for clients on a monthly or quarterly basis. Docketing . Assisting other trademark paralegals with work overflow for prosecution, opposition and cancellation proceedings. Keeping up with changes in USPTO rules and varying procedures for foreign jurisdictions. Preparing and filing copyright applications. Preparing reports for clients with information relating to overall trademark portfolios. Work with attorneys to establish trademark group procedures. Work with other paralegals/I.T. to maintain the integrity of the CPI database. Providing instructions to and overseeing projects assigned by paralegal to a project assistant, where applicable. Other projects and tasks as assigned by lawyers, senior paralegals, or Office Administrator.
Qualification and Experience
Requirements: Bachelor’s degree required. 3+ years work experience in a law firm environment, or related professional experience. Proficiency with Microsoft Office Suite, including MSWord, Outlook, Excel, PowerPoint, etc.; proficiency with Trademark database (CPI or similar); working knowledge of Nuance required; working knowledge of FileSite document management system is a plus. Ability to work effectively with a wide range of individuals in multiple offices and multiple time zones. Ability to organize and prioritize numerous tasks and complete them under time constraints. Ability to proofread materials for contextual, grammatical, typographical or spelling errors. Must have strong organizational, decision-making skills and problem solving skills. Must be reliable and a self-starter. Ability to operate standard office equipment such as computer and photocopiers. Routinely review and process vendor invoices. Extensive contact with lawyers, staff and colleagues in multiple offices and time zones. Must be able to spend long periods of time working at computer workstation. Work is normally performed in a typical interior/office work environment. Must be available to work overtime, including weekend hours, when necessary to meet established deadlines or stay current with occasional peaks in workload. Must be willing to change regular work schedule to meet the needs of the Firm. Must be able to perform essential duties of the position with time constraints and frequent interruptions. Ability to work well in high pressure environments.
Job ID: 1716
Company infoHiring Coordinator