Paralegal, Trademark - Law Firm

About the role

Jones Day is a global law firm with 40 offices in major centers of business and finance throughout the world. Covering 19 countries on five continents, our unique governance system fosters an unparalleled level of integration and contributes to our ranking as one of the best in the world in client service. Jones Day seeks to employ the most qualified people, capable of delivering superior client service through professional excellence and teamwork, for every position in the Firm. We offer competitive compensation and benefits in a stimulating work environment. Are you interested in the opportunity to work for a global leading law firm that will give you the experience and exposure you need to build your knowledge and skills as well as advance your career? If you are, then Jones Day may be the firm for you.

Responsibilities

• Prepare USPTO filings including Applications, Office Action Responses, Amendments to Allege Use, Declarations of Use and Incontestability, and Applications for Renewal.
• Assist attorneys with domestic and international trademark opposition and cancellation proceedings, including preparation of pleadings, document productions, filing documents with the Trademark Trial and Appeal Board, conducting Internet research, and assisting with policing and enforcement, such as cease and desist letters.
• Communicate with clients regarding US and foreign trademark maintenance requirements.
• Conduct domestic and international online trademark searches for use and registration; analyze search results and identify issues for attorneys.
• Assist with trademark due diligence, examine investigative summaries and prepare reports and recommendations.
• Instruct and liaise with international associates to oversee filing and prosecution of international applications.
• Oversee execution and legalization of documents.

Qualifications

• Bachelor’s degree and strong academic record.
• Minimum four years of experience as a Trademark Paralegal in a law firm or corporation.
• Ability to communicate with clients and local counsel regarding issues that may arise during prosecution, such as evidence of use requirements, reclassifications, etc.
• Fluent with SAEGIS, PTO TEAS System; Microsoft Word, Excel and Outlook.
• Highly motivated, positive attitude, and able to work in a team environment.
• Strong organizational skills, ability to prioritize, juggle multiple tasks, and meet deadlines.
• Ability to research, analyze and synthesize large amounts of data.
• Excellent attention to detail skills, including ability to assess and respond to underlying detail issues and implications.
• Flexibility to work overtime.