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Years of Experience
Date Last Verified
Trademark Paralegal The candidate will receive and field trademark search requests from clients, conduct on-line trademark screening searches. Order full trademark searches, investigate relevant listings for details of use, evaluate results of searches and investigations in consultation with the attorney; track clearance requests. Will assist attorney with all aspects of U.S. trademark prosecution and maintenance, including maintenance of files, consulting with attorneys as appropriate, preparation and filing of applications, Office Action responses, ITU-related documents (e.g., Statement of Use), and Post Registration documents (e.g., Sections 8, 9, and/or 15 Affidavits). Assist attorney with filing and maintenance of international trademark applications and registrations, including maintenance of files; reviewing and evaluating and consulting with the attorneys regarding correspondence from foreign counsel and drafting responses to same; gathering and providing foreign counsel with information/documentation necessary to prosecute/maintain trademark applications and registrations and respond to Office Actions. Prepare Assignments of trademark registrations and applications and file same with PTO Assignment Branch. Prepare and coordinate the execution and legalization of documents (such as trademark Assignments and Powers of Attorney) for submission in international trademark matters. Investigate possible infringements. Maintenance of files and databases; reviewing and evaluating correspondence from US and foreign counsel and drafting responses to same; and gathering and providing foreign counsel with information/documentation and other evidence relevant to the dispute. Receive requests from clients for IP input on licenses and other agreements, review agreements and recommend revisions to relevant IP language, and update and/or maintain related files and databases, including records for the Company's international trademark licenses and the recordation of related extracts. Enter and update data in IP databases and generate database reports as needed. Field inquiries from clients regarding various trademark/copyright and other IP issues; report status of IP matters to clients. Create and maintain paper and computer files of IP records, correspondence and documents. Review outside counsel and other vendor invoices for accuracy and process payment of same. Assist with due diligence and other intellectual property issues related to deals, agreements, and other transactional matters. Responsible for own work and contributing to team, department and/or business results. Perform other duties and special projects as requested; may involve handling confidential and sensitive material. Proactively manage work; works with limited supervision on some tasks and closer supervision on others, as appropriate. Manage Trademark Authorization letter requests from licensees and other divisions and prepare letters for review and signature by attorney.
Qualification and Experience
The candidate should have Bachelorâ€™s Degree or equivalent qualifying work experience required; certificate from an ABA-approved paralegal program is helpful. Should have 2+ years of substantive and applicable experience as a trademark/copyright paralegal or senior legal assistant performing the functions set forth herein in a law firm or corporate law department; hands-on experience in managing international trademark portfolios is preferred. Excellent written and oral communication skills are needed. Must have proficiency in an online trademark database (e.g., CORESEARCH) and LEXIS/NEXIS. Proficiency in a trademark records database (e.g., ANAQUA) is needed.
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