Trademark Paralegal

3-6 yrs required

Full-time

No

Trademark Paralegal – Boston, MA
Salary Information: Negotiable based on experience
Job Title: Trademark Paralegal
Experience: Minimum of 3 years of experience as a Trademark Paralegal in a law firm or corporate setting.

Position Summary:

- Experienced and independent paralegal with experience in . and foreign trademark prosecution and enforcement.
- Must be able to work independently and prioritize tasks based on deadlines and changing needs of clients and attorneys.
- Team-oriented and able to collaborate with other support staff and attorneys.
- Provide support to trademark partners and associates, along with 3 other experienced TM paralegals.

Responsibilities:

- Manage all phases of routine . and foreign trademark prosecution.
- Assist with preparation and filing of . trademark applications, Office Action Response, Statements of Use, Section 8 & 15 Affidavits, Renewals, and related documents with the . Patent and Trademark Office.
- Assess acceptable specimens of use for submission to the USPTO.
- Assist with copyright and domain matters.
- Manage . and foreign opposition/cancellation actions and other enforcement efforts.
- Oversee trademark docket and provide support and reminders to attorneys.
- Assist with global trademark clearance efforts and develop clearance opinions with attorneys.
- Review and assess third party search reports.
- Communicate with clients regarding prosecution, enforcement, and clearance.
- Participate in trademark filing strategy discussions.
- Oversee . and foreign assignment recordation projects as needed.
- Assist in preparation and filing of UDRP and TTAB actions.
- Liaise with foreign agents regarding foreign filing requirements for trademark prosecution and maintenance.
- Prepare reporting and instruction letters to clients.
- Create Trademark Status Charts as necessary.
- Conduct regular status checks on trademark portfolios.

Requirements / Abilities:

- Minimum of 3 years of experience as a Trademark Paralegal in a law firm or corporate setting.
- Experience with conducting US, Canada, and international trademark clearance searches using online tools, or willingness to learn.
- Strong interpersonal skills and clear and concise communication skills.
- Ability to follow instructions effectively from a diverse group of clients, attorneys, and trademark team.
- Strong analytical and reasoning skills, with the ability to identify and suggest solutions to challenging issues.
- Strong organizational skills and attention to detail, with the ability to prioritize and work under pressure.
- Motivated and positive attitude, able to work independently and in a team environment.
- Ability to work efficiently in a virtual environment.
- Familiarity with Madrid Protocol and WIPO filing rules and processes.

Minimum Qualifications/Requirements:

- .
- Proficient in Outlook, Word, Excel, and iManage or other document management system.
- Knowledge of trademark docketing systems and experience with the USPTO websites.

Salary Information: Negotiable based on experience

H1: Trademark Paralegal – Boston, MA
H2: Experienced and Independent Paralegal for . and Foreign Trademark Prosecution and Enforcement

Trademark Paralegal Position at Law Firm in Boston, MA

Responsibilities:

- Manage all phases of . and foreign trademark prosecution.
- Assist with preparation and filing of trademark applications and related documents with the USPTO.
- Conduct trademark clearance searches and assist with copyright and domain matters.
- Oversee trademark docket and provide support to attorneys.
- Assist with global trademark clearance efforts and develop clearance opinions.
- Review third party search reports and communicate with clients.
- Participate in trademark filing strategy discussions and oversee assignment recordation projects.
- Assist with UDRP and TTAB actions and liaise with foreign agents.
- Prepare reporting and instruction letters to clients and create Trademark Status Charts.
- Conduct regular status checks on trademark portfolios.

Requirements / Abilities:

- Minimum of 3 years of experience as a Trademark Paralegal in a law firm or corporate setting.
- Experience with conducting US, Canada, and international trademark clearance searches using online tools, or willingness to learn.
- Strong interpersonal skills and clear and concise communication skills.
- Ability to follow instructions effectively from a diverse group of clients, attorneys, and trademark team.
- Strong analytical and reasoning skills, with the ability to identify and suggest solutions to challenging issues.
- Strong organizational skills and attention to detail, with the ability to prioritize and work under pressure.
- Motivated and positive attitude, able to work independently and in a team environment.
- Ability to work efficiently in a virtual environment.
- Familiarity with Madrid Protocol and WIPO filing rules and processes.

Minimum Qualifications/Requirements:

- .
- Proficient in Outlook, Word, Excel, and iManage or other document management system.
- Knowledge of trademark docketing systems and experience with the USPTO websites.

Salary Information: Negotiable based on experience.

Not specified

To be discussed during the interview process.

Not specified

U.S. and foreign trademark prosecution and enforcement, trademark clearance searches, copyright and domain matters, trademark portfolio management, trademark docketing, legal research, communication, organization, multitasking

Bachelor's Degree

Please submit your resume and cover letter to the contact person listed below.

Qualification and Experience Bachelor's Degree and/or 3 to 6 years of relevant and successful experience as a Trademark paralegal

Legal