Job: Trademark Paralegal

Title Trademark Paralegal
Categories Paralegals
Job ID 1845
Location New York, NY
Job Information

An international corporate, litigation intellectual property law firm is seeking an experienced trademark paralegal with 5-7 years’ experience . The job opening is in the New York office, Battery Park location.

Clearance

– Conduct preliminary in-house searches using Serion search database. Assess results with attorney and prepare draft e-mail to client outlining results of preliminary searches.

– Review full search reports for trademark clearance.  Assess results with attorneys and prepare draft opinion letter to client outlining results of full search.

Trademark Prosecution – U.S.

– Prepare draft descriptions of goods/services for new applications to the specification of client’s products/services.  Obtain and review specimens of use.

– Prepare and file trademark applications with U.S. Trademark Office, WIPO (including subsequent designations).

– Prepare draft responses to office actions issued for informalities (e.g., goods/services amendments, disclaimers, suspension inquiries, etc.) and substantive objections (e.g., confusing similarity, descriptiveness, surname, etc.).

– Prepare and file i) extensions of time to submit Statements of Use, iii) Statements of Use, iii) Declarations of Continued Use and iv) Renewal Applications.

– Prepare Petitions to Director.

– Prepare and file appeals, requests for remand, etc. with Trademark Trial and Appeal Board (“TTAB”).

– Prepare and file extensions of time to oppose.  Prepare draft notices of opposition and cancellation actions.  File oppositions and cancellation actions with TTAB.  Prepare motions for submission to TTAB (e.g., motion to extend trial deadlines, suspension of proceedings, etc.).

– Prepare draft trademark assignments.  File trademark assignments for recordation.  Record corporate name changes, security interests (and releases), etc. with U.S. Trademark Office.

Trademark Prosecution – Foreign

– Maintenance of large non-domestic trademark portfolios.  Instruct foreign counsel to apply for and maintain international trademarks.

– Coordinate trademark assignments for multi-step transfers on global basis.

– Manage non-domestic opposition and cancellation actions including gathering supporting evidence, conducting research of infringing parties, etc.

– Effect legalization of Powers of Attorney, trademark assignments, affidavits, etc. for use outside of U.S.

Copyrights

– File copyright applications, prepare of reconsideration responses for copyright objections.

– Prepare draft copyright assignments.

– File copyright assignments for recordation.  Record corporate name changes, security interests (and releases), etc. with U.S. Copyright Office.

Trademark Watch

– Review watch service reports for any potential conflicts.  Report potential conflicts to client.

– Liaise with associate on opposition/cancellation matters including obtaining chances of successfully prevailing, conducting use investigation, etc.

IP Acquisitions

– Assist in the acquisition of trademarks, copyrights and domain names.

Domain Names

Register domain names.  Draft and file UDRP complaints.

Customs

– Record trademark and copyright registrations with U.S. and foreign Customs Offices.

Management

Assist in daily management of Trademark Department including overseeing Docketing Department.

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