Trademark Prosecution Paralegal (remote-tristate)

Job Description:

Essential Duties and Responsibilities:

• Preparation of domestic trademark applications, renewals, extensions of time, affidavits of use, etc. for some clients.
• Prosecution and maintenance of foreign trademark applications and registrations.
  • Powers of Attorney
  • Legalization procedures
• Prosecution of oppositions/cancellations/investigations in connection with foreign trademarks.
  • Gathering evidence and related materials.
  • Preparing computer reports re worldwide status of marks.
• Preparation and recording of name changes, assignments, foreign use and registration Undertakings and Prior Right Agreements.
• International clearance searching, drafting opinion letters.
• Creation and maintenance of trademark databases and extranet sites
• Monitor foreign trademark law developments, update related database re same.
• Knock-Out searching to initially determine non-availability of marks.
• Assist attorneys in prosecution and maintenance of U.S. trademark applications and registrations including applications, renewals, extensions of time, statements of use, section 8&15 affidavits.
• Assist attorneys in preparation of documentation for U.S. office action responses and/or oppositions.
• Docketing records for all trademarks matters (including U.S. litigation)
• Preparation of quarterly, six month and annual computer docket/status reports for some clients.
• Review and approval of invoices.
• Liaison with clients concerning the foregoing.
• Attendance at conferences and/or informational meetings regarding new trademark laws and policies.
• Meeting with foreign associates in our office to discuss client matters and receive new law information.
• Other projects as assigned by the Director of Administration.

Job Requirements:

Qualifications:

• Minimum Bachelor’s degree or relevant work experience.
• Minimum five (5) years of work experience in a law firm environment, or related professional experience.
• Thorough knowledge of trademark docketing procedures.
• Thorough knowledge of U.S. & Foreign trademark prosecution procedures and PTO rules and forms.
• Familiarity with procedures for billable time in time tracking program such as CD Entry, CPI docketing program, and Filesite a plus. Also, familiarity with Microsoft Word and Excel and electronic filing with the USPTO required.
• Ability to organize and prioritize numerous tasks and complete them under time constraints.
• Ability to proofread material for contextual, grammatical, typographical or spelling errors.
• Interpersonal skills necessary to communicate in person, by e-mail and telephone and follow instructions effectively from a diverse group of clients, attorneys and staff and provide information with ordinary courtesy and tact.
• Work may require more than 35 hours per week to perform the essential duties of the position and may require irregular hours.
• Ability to operate standard office equipment such as computer, photocopiers, and fax machine