Trademark Paralegal

Job Description :

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.

Coordinate with foreign 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 of Office Actions.

KNOWLEDGE / SKILLS REQUIRED :

Bachelors degree or equivalent experience required.

o Preferred : Paralegal Certification.

Minimum 5 years of Trademark work experience in a professional environment which includes progressive responsibility in managing Trademark and litigation matters.

o 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.

Required Skills :

Litigation

Team Player

Organizational Skills

Renewals

Attention To Detail

Due Diligence

Registration

Confidentiality

Screening

Filing

Strategy

Pressure

Preparation

Research

Maintenance

Microsoft Office