Trademark Prosecution Paralegal

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Job Description:

Essential Functions

* Prepare and file U.S. trademark applications, office action responses, statements of use, extensions of time, renewals, declarations of use/incontestability, assignments, recordations, and other USPTO filings, ensuring compliance with legal and procedural requirements;

* Conduct preliminary trademark clearance and registrability searches and coordinating more comprehensive searches, and prepare draft reports and recommendations based thereon;

* Manage, maintain and update the trademark docket, including ensuring that all trademark-related deadlines are accurately recorded and monitored;

* Manage domestic and international trademark portfolios, including coordinating with foreign counsel on applications, renewals, office actions, oppositions, cancellation, recordation and other related matters;

* Prepare draft reports to clients on all trademark prosecution matters, and prepare trademark status reports, docket reports, portfolio summaries and other client facing reports;

* Assist in developing and maintaining trademark practice systems, templates, workflows and best practices;

* Support TTAB proceedings, including docketing deadlines, preparing routine filings, coordinating discovery responses, collection of evidence and other hearing support;

* Review watch notices and prepare reports and recommendations to clients;

* Communicate and send reminders directly to attorneys and clients regarding deadlines, filings, and other routine updates;

* Assist with trademark due diligence in licensing and other corporate transactions, including ownership chain-of-title review, and preparing supporting schedules;

* Prepare and file copyright registrations applications with the U.S. Copyright Office and manage related communications.

Job Requirements:

Competencies
* 7+ years of trademark prosecution experience in a law firm environment;
Strong working knowledge of USPTO trademark procedures, TEAS filings, prosecution deadlines, renewal requirements, assignment and recordation requirements and TTAB practice;
* Ability to manage busy docket independently and proactively identify upcoming issues and recommend and pursue solutions to same;
* Experience preparing and filing U.S. trademark applications, office action responses, statements of use, extensions of time, renewals, declarations of use/incontestability, assignments. recordations, and other USPTO filings, and reports to clients on all of the foregoing;
* Experience with international trademark prosecution and coordination with foreign counsel, and familiarity with Madrid Protocol and WIPO filings;
* Experience conducting and analyzing preliminary searches and preparing draft recommendations to clients based on preliminary and comprehensive clearance and registrability searches;
* Experience with trademark docketing systems, e.g. PATTSY/CPI
* Extraordinary attention to detail;
* Excellent judgement
* Ability to multitask and prioritize assignments while consistently delivering quality work product to both attorneys and clients;
* Notary Public License or able to attain within 6 months;
* Proven experience performing under pressure with a high volume of work in a fast-paced environment, both individually and within a team setting;
* Willingness to work overtime when necessary;
* Proficiency with Microsoft Office, particularly Word, Outlook, Excel and iManage.

Education and Experience
Associate's Degree, Bachelor's Degree and/or Paralegal Certificate required.