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Law Firm
Legal Staff
Intellectual Property - Trademark/Copyright
Min 2 yrs required
Trademark Paralegal Duties: The candidate will assist attorneys and staff in the delivery of quality legal services to clients in an efficient and cost-effective manner. Will prepare domestic trademark applications, renewals, extensions of time, affidavits of use, etc. for some clients. Prosecute and maintain foreign trademark applications and registrations. Prosecute oppositions/cancellations/investigations in connection with foreign trademarks. Gather evidence and related materials. Prepare computer reports regarding worldwide status of marks. Prepare and record name changes, assignments, foreign use and registration Undertakings and Prior Right Agreements. Deal with international clearance searching and drafting opinion letters. Create and maintain trademark databases and extranet sites. Monitor foreign trademark law developments, update related database regarding the same. Knock-Out searching to initially determine non-availability of marks. Assist attorneys in prosecution and maintenance of US trademark applications and registrations including applications, renewals, extensions of time, statements of use, section 8&15 affidavits. Assist attorneys in preparation of documentation for U.S. office action responses and/or oppositions. Docket records for all trademark matters (including US litigation). Prepare quarterly, six month and annual computer docket/status reports for some clients. Review and approve invoices. Liaise with clients concerning the foregoing. Attend conferences and/or informational meetings regarding new trademark laws and policies. Meet with foreign associates in the office to discuss client matters and receive new law information. Manage other projects as assigned by the Office Administrator.
Qualification and Experience
Qualifications: The candidate should have a Bachelor's degree or relevant work experience. Must have 2+ years of work experience in a law firm environment, or related professional experience. Thorough knowledge of trademark docketing procedures. Thorough knowledge of US and foreign trademark prosecution procedures and PTO rules and forms. Familiarity with procedures for billable time in time tracking program such as CD Entry, CPI docketing program, and Filesite a plus. Familiarity with Microsoft Word and Excel and electronic filing with the USPTO required. Ability to organize and prioritize numerous tasks and complete them under time constraints. Ability to proofread material for contextual, grammatical, typographical or spelling errors. Interpersonal skills necessary to communicate in person, by email and telephone and follow instructions effectively from a diverse group of clients, attorneys and staff and provide information with ordinary courtesy and tact. Work may require more than 35 hours per week to perform the essential duties of the position and may require irregular hours. Ability to operate standard office equipment such as computer, photocopiers, and fax machines.
Requisition Number: TRADE01488
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