Trademark Paralegal

Our Firmwide IP Services department has an opportunity for a Trademark Paralegal role. Reporting to a Trademark Supervisor, this position will support the trademark prosecution practice s is a remote position, with working hours of 8a-5p PT.

Responsibilities:

• Support the trademark prosecution practice; including preparation and filing of trademark and copyright applications with the USPTO and WIPO, formality documents such Assignments, Office Action Responses, Statements of Use, Affidavits of Use, Renewals and other related filings; TTAB filings, oppositions and cancellations.
• Correspond with NonUS agents regarding foreign filings and related activities
• Communicate with clients regarding status of trademark matters and related activities
• Process incoming files transferred to the firm
• Prepare reports related to trademark prosecution activities; including client status reports and docket reports
• Ensure accurate record keeping related to trademark prosecution activities; including maintaining the IP prosecution docket, saving correspondence and documents in the firm's document management system
• Conduct international and US preliminary searches via internet and electronic databases; assist in review of search reports and other issues related to clearance of marks
• Capture billable time in the firm's timekeeping system
• Stay up-to-date with changes to Intellectual Property rules and regulations
• Maintain excellent client service to internal and external clients

Requirements:

• Associate's degree or work experience equivalent with a minimum of 10 years of trademark and copyright prosecution experience
• Deep understanding of Intellectual Property rules and regulations in jurisdictions worldwide
• Experience with IP docketing systems
• Ability to effectively communicate with attorneys, staff and clients
• Strong oral and written communication skills
• Proficiency with Microsoft Office Suite, including Word and Excel, Document Management Systems such as Net Docs
• Ability to work occasional overtime and weekends as needed

LANGUAGE SKILLS:

Ability to speak effectively with all levels of clients and professional and support staff. Interpersonal communication skills necessary to maintain effective relationships with partners, attorneys, clients and staff and to exhibit a high degree of responsiveness, diplomacy and professionalism in these interactions. Ability to effectively and promptly respond to common inquiries or complaints from all levels of professional and support staff, clients, regulatory agencies, or members of the business community.

Ability to read and interpret documents such as operating instructions, procedure manuals, general business periodicals, professional journals, technical procedures, governmental regulations, financial reports, and legal documents.

MATHEMATICAL SKILLS:

Ability to add, subtract, multiply, and divide in all units of measure, using whole numbers, common fractions, and decimals. Ability to calculate figures and amounts such as discounts, proportions, percentages, area and circumference.

REASONING ABILITY:

Ability to apply common sense understanding to carry out instructions furnished in written, oral, or diagram form. Ability to deal with problems involving several concrete variables in standardized situations. Ability to define problems, collect data, establish facts and draw valid conclusions. Ability to interpret an extensive variety of instructions and deal with several abstract and concrete variables. Exhibit independent thinking and decision making.

Ability to think strategically, develop tactics and execute pragmatically.

PHYSICAL DEMANDS:

The physical demands described here are representative of those that should be met by an employee to successfully perform the essential functions of this job. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions. While performing the duties of this job, the employee is regularly required to sit; use hands to finger, handle, or feel objects, documents, books, pen/pencil, paper, controls and manipulate a keyboard, and input data into a PC;

and talk or hear. The employee is frequently required to walk. The…