Our client, A prestigious law firm, is seeking a Senior Trademark Paralegal.
The Paralegal will be responsible for providing paralegal support and assistance to attorneys in the area of Trademark law in the coordination, management, and supervision of domestic and international trademark filing and prosecution. This position requires heavy client contact. Maintain professionalism and strict confidentiality in all client and Firm matters.
Client billable hour requirement: 1,700 hours annually (142 client billable hours average per month).
Manage all aspects of domestic and foreign prosecution for a large portfolio including
recordation of assignments, renewals, offices’ actions, and new filings.
Prepare, review, and oversee trademark applications, extension requests, statements of
use, assignments, and maintenance and renewal filings with the United States Patent
and Trademark Office through issuance of trademark.
Address foreign counsel requirements for Powers of Attorney.
Prepare inquiries to and responses from the United States Patent and Trademark
Liase with foreign counsel regarding international trademark filings.
Assist with trademark analysis including ability to review, investigate results and
summarize trademark full searches.
Draft letters to clients regarding trademark information.
Utilize on-line trademark database (CPi) and conduct trademark clearance searches.
Perform file organization and maintenance.
Maintain up-to-date time reports to ensure accurate client billing.
Perform due diligence ownership searches on trademarks, copyrights and domain
names to assist corporate department with M&As, security agreements, etc.
This position has no direct supervisory responsibilities, however, has the authority to
delegate and supervise work performed by Project Assistant and/or Paralegal I and II
staff on a case-by-case basis.
KNOWLEDGE, SKILLS, AND ABILITIES
Bachelor’s degree and five or more years progressive work experience in the
intellectual property area preferably in a law firm environment; or equivalent
combination of education and experience. Legal research knowledge and ability to use
law library are required. Paralegal certificate from an ABA accredited paralegal
program a plus.
Knowledge and experience working with the United States Patent and Trademark
Office. Applicable knowledge and understanding of all components of domestic and
foreign trademark principles, rules, and regulations with respect to filing procedures and
requirements especially regarding Internet filing capabilities. Knowledge of foreign
trademark rules in order to prepare foreign filings highly desirable.
Must be familiar with Trademark Trial and Appeal Board (TTAB) filing requirements and
be able to assist in all aspects of TTAB proceedings. Litigation experience a plus.
Computer proficient with experience and working knowledge of Westlaw and other
intellectual property-related databases including Serion and Corsearch, Internet
research, due diligence, Excel, Outlook, and MS Word preferred. Must be proficient in
trademark docketing databases such a CPi and experience with Foundation IP is a plus.
Exhibit high degree of initiative with excellent analytical, technical, and critical-thinking
skills requiring an aptitude for detail, precision, and logic in order to analyze and
research intellectual property data, process information, conduct legal research, and
perform essential duties.
Excellent organizational skills including record keeping, data collection, and system
information. Ability to compile and analyze data and furnish concise, detailed
information in report format, written correspondence, e-mail, or verbally.
Excellent interpersonal, verbal, and written communication skills. Ability to
communicate with courtesy and diplomacy, efficiently follow written and verbal
instructions, provide information and training, and maintain effective relationships with a
diverse group of attorneys, clients, staff, and outside contacts.
Dependable team player who works collaboratively and cooperatively with others in a
team-oriented environment. Ability to act independently and make decisions within
scope of the position’s responsibilities.
Ability to organize, prioritize, and oversee numerous tasks from inception to completion,
and ensure work is completed within strict deadlines.
Ability to and manage multiple priorities simultaneously in a fast-paced, deadline-driven,
detail-oriented work environment, and adapt to changes in workflow. Proactive with
excellent troubleshooting, problem resolution, and follow-through skills.
Possess excellent knowledge of reading, writing, grammar, spelling, punctuation,
proofreading, and formatting in order to prepare intellectual property documents and
forms, proofread material for grammatical, typographical, and spelling errors, and
perform file maintenance.