Trademark Paralegal

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

  Qualifications

  • 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
  • Reasoning Ability Ability to apply common sense understanding to carry out instructions furnished in written, oral, or diagram form
  • 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

  Skills

  • Demonstrated ability to multi-task and be detail-oriented with strong organizational skills
  • Strong analytical and communication skills both oral and written
  • Excellent organizational and planning skills with ability to prioritize multiple tasks and projects to meet deadlines
  • Outstanding creativity; flexibility and persistence; motivation and energy with the ability to work with little supervision and collaborate with other members of the team
  • Ability to work in a fast-paced environment with strict deadlines
  • Ability to exercise discretion with confidential and sensitive information
  • Must be able to perform essential duties of the position with time constraints and interruptions
  • A strong client service approach and team orientation
  • Demonstrate good judgment, tact, and flexibility under pressure in a mixed-matrix environment with many stakeholders and potentially competing priorities