Trademark Paralegal

ESSENTIAL JOB FUNCTIONS

• Review docket for deadlines; understand docket and deadlines and action needed on each file.
• Conduct electronic recordation of assignment documents; review Notice of Recordation and report same to client and prepare client status reports; work with and manage large global trademark portfolios.
• Comprehend chain of title in U.S. trademarks and ability to perfect same.
• Assist with trademark clearance projects, including U.S. screening and full searches and international screening and formal counsel searches.
• Prepare and file U.S. trademark applications, including electronic filings with follow through to registration and post‑registration maintenance and renewals tour
• Coordinate with foreignmw counsel on international clearance, filing, maintenance, and renewal matters: oversee processing of foreign associates' invoices for payment and prepare reporting letters to client.
• Prepare and file U.S. copyright applications, including electronic filings with follow‑through to registration.
• Effect portfolio transfers and manage multi‑client portfolios.
• Prepare and file powers of attorney and letters of instruction.
• Assist in trademark filing strategy discussions and due diligence.
• Assist with preparation and filing of responses to Office Actions.

• Bachelors degree or equivalent experience required.
• Preferred: gestor Paralegal Certification.
• Minimum 5 years of Trademark work experience in a professional environment which includes progressive responsibility in managing Trademark and litigation matters.
• Preferred:
  Law firm experience.
• Extensive knowledge of U.S. trademark rules and procedure; working knowledge of national laws of other countries; knowledge of Paris Convention and deadlines set therein.
• Knowledge of filing requirements for convention (foreign) applications.
• Proficient with electronic research tools such as Dialog, Saegis, PTO and WIPO; and conduct preliminary trademark searches.
• High level of proficiency with technology including Microsoft Office Suite applications, Adobe Acrobat, Lexis/Nexis, Westlaw (and Dialog) and other internet research tools.
• Excellent organizational skills, attention to detail, and the ability to multitask.
• Highly effective written and oral communications.
• Exceptional ability to lead and execute projects.
• Creative problem‑solving abilities.
• Work independently, taking initiative to move projects to conclusion.
• Maintain professional demeanor in stressful situations.
• Reliable and dependable team player.
• Maintain confidentiality of client information.
• Ability to perform well under pressure.

• Litigation
• Team Player
• Organizational Skills
• Renewals
• Attention To Detail
• Due Diligence
• Registration
• Confidentiality
• Screening
• Filing
• Strategy
• Pressure
• Preparation
• Research
• Maintenance
• Microsoft Office
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