Legal Staff Paralegal in New York City, NY

Law Firm

New York City, NY

Legal Staff Paralegal in New York City, NY

Legal Staff

No

**Members Only** brings you up to date and high quality legal staff openings in law firms and in-house legal departments of business organizations. In addition, we help solo attorneys hire experienced personnel from the legal industry. We not only have the best **Members Only** positions, but we also have the most.
Trademark Paralegal The candidate will support our trademark prosecution attorneys in our Boston and New York offices. Preparing and filing trademark prosecution and maintenance documents with the United States Patent and Trademark Office (PTO), and corresponding with foreign associates to coordinate management of clients foreign trademark portfolios. The Trademark Paralegal will communicate with clients regarding their trademark portfolios and prepare status reports and trademark schedules as needed. The paralegal must have exceptional client service skills, strong communication skills, attention to detail/accuracy, and the ability to meet deadlines consistently in a fast-paced environment working on multiple matters. Conduct preliminary trademark database searches on SAEGIS. Commission comprehensive searches from trademark search vendors. Conduct general Internet trademark searches. Prepare and file trademark applications before the PTO, including collecting and reviewing supporting documents/materials. Prepare and file Madrid Protocol applications. Prepare and file other routine trademark documents, including statements of use and extensions of time to file statements of use, and post-registration maintenance filings and renewals. Prepare and record trademark and copyright assignment documents. Correspond with foreign trademark agents regarding foreign trademark prosecution matters and contentious proceedings. Communicate with clients regarding requirements for submitting trademark applications, non-substantive Office Actions, and reporting changes to the status of trademark applications. Prepare trademark status reports and trademark schedules upon request from client or attorney. Communicate with the PTO. Instruct docketing team on updates to trademark database, and review and update docket calendar reports. Participate in regularly scheduled paralegal and practice group meetings. Assist with filings in contentious matters before the Trademark Trial and Appeal Board. Record trademark and copyright registrations with . Customs. Assist with preparation of copyright applications. Assist on litigation matters and IP due diligence matters, as needed. Must have 2 years of trademark prosecution experience. Working knowledge of . Patent and Trademark Office and . Copyright Office rules and procedures, including the Trademark Manual of Examining Procedure. Strong familiarity with PTO TEAS forms and SAEGIS search tools; familiarity with ESTTA forms also helpful. Familiarity with Foundation IP and First to File docketing and file management platforms preferred; familiarity with Global IP Estimator also helpful. Excellent oral and written communication skills. Strong attention to detail with the ability to manage multiple priorities. Ability to establish and maintain good working relationships with clients, foreign associates, and all levels of firm personnel and to handle confidential information sensitively and discreetly. Ability to work independently and as part of a team in a fast-paced environment, while demonstrating initiative, diplomacy, and composure when under pressure.