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Trademark Paralegal Responsibilities: Assist attorneys in the prosecution of . and foreign trademark and copyright cases, as well as Trademark Trial and Appeal Board (TTAB) cases, along with foreign oppositions and cancellations. Research third-party use of marks, as well as trademark assignments and name/address change, records in foreign countries. Prepare and file . trademark and copyright applications with the USPTO. Prepare and assist with filing extensions of time, statements of use, combined affidavits, assignments, renewal applications, and responses to office actions with the USPTO. Prepare initial search opinion letters, cease and desist letters, foreign filing instruction letters, as well as foreign associate letters instructing the filing of opposition or cancellation proceedings. Prepare cost estimates for trademark prosecution and maintenance, including filings in foreign countries. Conduct, order, and analyze trademark watching service reports; forward reports and results to assigned clients. Prepare and file all documents in connection with oppositions and cancellation actions or proceedings. Assist with the preparation of documents to be produced with the preparation of answers to discovery requests. Prepare registered user agreements, assignments, and license agreements. Prepare various charts and status reports of domestic and foreign trademark and copyright protection. Provide coverage for the Trademark Department as requested. Conduct and participate in training as necessary. Other tasks as assigned by supervisors.
Qualifications: Bachelor's degree along with either a Paralegal Certificate or a written declaration from a supervising trademark attorney stating that the candidate is qualified to perform paralegal tasks. 1-3 years of trademark paralegal experience. Courses in business and communication are helpful. Excellent computer skills; proficient in Microsoft Office Suite. Experience working with iManage or similar document management systems and research tools such as Saegis. Effective writing skills; excellent proofreading, spelling, grammar, and punctuation. Able to work with minimal supervision exercising good judgment and decision making. Effective verbal communication skills. Able to analyze, organize and prioritize case information. Able to meet the Firm's billable hour requirement or value-added equivalent. Must be efficient, accurate, flexible, timely, and have excellent attention to detail.
