Job: Trademark Litigation Paralegal

Title Trademark Litigation Paralegal
Categories Paralegals
Job ID 2102
Location New York City
Job Information

A preeminent, full-service law firm with offices around the world is seeking a Trademark Litigation Paralegal for the NY office.
Essential Job Functions

This position will have a considerable number of assignments from our copyright and trademark practice group. Typically, one IP Litigation Paralegal is assigned to most IP litigation cases with additional support provided in the form of Junior Paralegal personnel. In particular, cases that are large, complex or multi-party actions. The Paralegal will work with the assigned attorneys (including those attorneys in other offices) on the matter from the filing of the complaint through discovery, and attending trial. The Paralegal will be responsible for managing the flow of information and ensuring adherence to best practices. Successful Paralegals develop solid working relationships with senior partners and clients. They also continually find new and better ways of doing things, improving processes through the application of new technology.

The Paralegals interact with vendors and directly with government agencies (e.g. Patent & Trademark Office, Copyright Office, or Copyright Royalty Board) to obtain information and materials, such as certified copies of copyright or trademark registrations, file histories and file wrappers.

The Paralegals are responsible for managing the files (“case record”) including a complete set of the correspondence, memos, pleadings, and client documents in a matter, and help monitor deadlines by creating and maintaining calendars of key dates.

The Paralegals work in all phases of the discovery process, from collection of documents from the client to the production of documents to other parties. This means working with the client and their in-house legal staff to collect relevant electronic and paper documents and data, as well as assisting at client interviews and on-site document reviews. Once documents and data have been collected, the Paralegals design and manage the document review process to help identify and track potentially responsive, confidential and privileged materials.

Paralegals help compile information necessary to respond to interrogatories, document requests and requests for admission served on their clients. They also organize and review documents received from other parties.

In order to manage the large volume of documents and information during the discovery phase of litigation, Paralegals set up databases, either on-line or in-house, obtaining assistance and support as necessary from Litigation Support and from outside vendors.

Paralegals help attorneys prepare for depositions by arranging the preparation of witness files, compiling and organizing exhibits, and arranging the technical logistics with court reporting agencies. For expert depositions, they research prior testimony and publications, and track materials sent to the experts. Paralegals manage deposition transcripts and exhibits, and maintain searchable computer databases of testimony.

Paralegals work with the attorneys during the briefing process by checking the legal and fact cites, and ensuring proper formatting style. They are often responsible for assembling and organizing the exhibits and supporting documents as well as arranging for filing with the court and serving on all parties.

In preparation for trial, the Paralegals work with the attorneys, experts, and client to identify and compile potential trial exhibits, generate trial exhibit lists, and track objections to both party’s exhibits. They prepare deposition designations, and compile Pretrial Orders and other submissions. They coordinate the scheduling of witnesses for preparation and testimony. They work with trial consultants on graphics, linking deposition videos and other demonstratives, and coordinate courtroom logistics with courthouse personnel. They set up and manage off-site trial offices, arranging for all office support and logistics.

At trial, the Paralegal team prepares materials for each day’s examinations, tracks the use and admission of exhibits, tracks and reviews witness testimony, and delivers and picks up all materials at the courtroom each day.


Litigation Case Management:
Obtains information and materials from IP vendors and government agencies, such as the US Patent & Trademark Office and Copyright Royalty Board
Certified copyright or trademark registrations
Copyright or trademark file histories and wrappers
Manages document production processes – hard copy, electronic, etc.
Collects material from client, opposing parties, and third parties (hard copies, electronic data, physical evidence)
Maintains chain of custody
Prepares and maintains the tracking log of materials received and produced through the discovery process
Designs and implements document review systems
Prepares privilege logs
Manages logistics of production of documents – hard copy, images, native
Substantive Research
Analyzes documents and materials
Performs factual research
Compiles information into charts, graphs and timelines
Researches prior testimony and publications of opposing experts
Researches rules of procedure for relevant court venues, and assures adherence thereto
Coordinates preparation and filing of briefs and legal documents
Drafts routine filings (e.g. attorney appearances, notices of filings, notices of motions)
Legal cite checking, shepardizing (Westlaw, Lexis)
Fact checking:
Compiles appendices and exhibits
Blue Book formatting, application of local rules
Prepares and submits electronic court filings
Interacts with outside entities (clients, government agencies, expert witnesses, consultants, other law firms, opposing parties, court personnel, etc.)
Manages litigation support systems
Databases (Relativity, Concordance, Summation, Access, etc.)
Transcript management systems (TextMap)
Calendaring, task sharing, collaborative systems
Manages preparation for witnesses and depositions
Manages preparation of witness & subject files
Assists in preparation of witness outlines
Works with expert witnesses
Manages technical logistics for depositions (remote hookups, electronic transcripts, videography, synchronization)
Manages trial preparation and trial support
Compiles and tracks trial exhibits
Prepares pretrial documents
Sets up and manages trial offices and trial support (e.g. remote office setup and logistics)
Manages resources:
Supervises legal staff
Obtains and supervises support from Firm departments (e.g. Litigation Support, Graphics Services, Purchasing, Trial Support Services)
Manages relationships with supporting vendors (graphics, court reporters, trial support, hotels, etc.)
Anticipates needs, acts without direction, asks questions
Handles many projects at one time
Assumes responsibility for self (and team); does not blame others
Seeks and implements new and better ways of working; process improvements
Markets services to attorneys
Willing to take risks, seek challenges, take over difficult or unconventional projects; can take on a project at any stage
Performance Management:
Trains staff and encourages development of knowledge and abilities
Enforces Firm policies:
Stays within cost and resource constraints
Assigns work based on abilities of subordinates and to ensure success in meeting needs and deadlines; identifies strengths and weaknesses of team members
Holds subordinates accountable for achieving expectations and working efficiently
Uses flexible approaches to different staff members
Talks openly and directly with subordinates about performance problems, providing guidance and direction; prepares skill development plans
Establishes and refines procedures to increase efficiency based on evidence
Designs systems and procedures to be consistent and to meet high standards
Solving Problems:
Breaks problems into component parts to find most appropriate solution
Researches and finds solutions for problems
Finds and tries more than one solution to stop problem from returning
Finds novel solutions:
Makes decisions within appropriate time frame and cost constraints
When needed, makes decisions with incomplete or imperfect information; handles ambiguity well
Managing Information:
Designs, implements and refines systems to absorb large volumes of data that can be easily retrieved by others
Teaches others to sort and store information using several systems
Establishes and maintains security and confidences
Manages large quantity of changing information in high stress circumstances
Gathering Information:
Understands purpose of information
Disseminates information in clear and concise fashion
Uses varied internal and external sources, and creative approaches, in locating information
Develops methods and systems to obtain and organize information
Considers time and cost constraints
Evaluates and refines data-gathering methods
Leading Teams (for those managing teams/staff)
Keeps members informed
Maintains a positive working environment
Gives credit and recognition
Keeps group motivated during long hours of work and high stress
Leads differing types of teams – flexible, cross-functional
Communication (oral, voicemail, e-mail):
Works well with attorneys, clients, experts, vendors, consultants
Effectively listens and responds; detects underlying meaning
Maintains professionalism and clarity in communication
Displays tact and good judgment
Changes communication style and mode as needed
Explains complex information and interprets data
Diffuses anger, anxiety and stress in group
Maintain confidentiality
Sell ideas and proposals to partners, clients
Persuades others to change their views
Influencing Others
Understands where to go for information and to accomplish tasks
Models behavior desired in others – leadership by example
Promotes change within organization
Persuades individuals and groups (partners, clients) to adopt best practices
Using Technology:
Keeps up to date on changes and improvements technologies relevant to practice area
Selects and applies most effective technologies to client matters
Trains staff and attorneys on use of technology
Uses complicated technical functions, and adapts technology for own needs
Develops and helps select new technical applications within the Firm
Monitoring for Accuracy, Quality and Order:
Maintains high work quality while working under pressure of deadlines and competing priorities
Monitors details and quality of others’ work (staff, attorneys)
Develops and manages complex systems to coordinate development and compilation of work product
involving Fattorneys (sometimes across practice areas), clients, other parties, potential bidders and investors, staff, consultants and vendors
Qualifications & Requirements

This position requires complex IP litigation (primarily copyright and trademark) experience – in various venues in the federal court system, as well as the trademark division of the U.S. Patent & Trademark Office and the U.S. Copyright Office. Other tasks include electronic court filing (ECF), managing large discovery requests and responses, creating and managing databases and imaging systems, and supervising paralegal teams. The candidate must have high-level experience with a range of litigation support applications including web-based platforms. This person should also have experience managing out-of-town trial offices for cases that have gone to verdict. The ideal candidate will possess at least five years of IP Litigation Paralegal experience within a large law firm environment; a bachelor’s degree is preferred. Additional qualifications include excellent analytical and superior organizational abilities, solid communication and management skills, creativity and initiative. Flexibility for travel and overtime required.

Apply Now