Trademark Paralegal

Title Trademark Paralegal
Categories Paralegals
Job ID 2746
Location New York
Job Information

Our client seeks an experienced Trademark Paralegal for their Trademark and Brand Management Group. This position will involve client contact, as well as working with the attorneys and other paralegals in the Group. We are looking for an applicant with a positive outlook, who is careful and pays attention to detail, and who takes pride in his or her work. This is a full-time, non-exempt position with excellent benefits.

Essential Duties and Responsibilities:
•Preparation of U.S. trademark applications, renewals, extensions of time, affidavits of use;
•Identifying appropriate specimens of use;
•Prosecution and maintenance of foreign trademark applications and registrations, including correspondence with clients and foreign counsel;
•Docketing records for all trademark matters, including TTAB proceedings but excluding federal court litigation;
•Following up with the responsible attorneys on deadlines and requests for instructions;
•Preparing status charts of client trademark filings;
•Recording assignments, certificates of merger, and name changes;
•Preparing U.S. Office Action Responses, TTAB pleadings, and other documents for filing with the USPTO and the TTAB;
•Docketing records for U.S. and foreign trademark matters;
•Review and approval of invoices; and
•Other projects relating to the firm’s trademark matters.

•Minimum Bachelor’s degree or relevant work experience;
•Minimum three years of work experience as a trademark paralegal;
•Extensive experience using the TEAS and ESTTA online filing systems;
•Extensive knowledge of trademark docketing procedures;
•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 appropriate courtesy and sensitivity;
•Familiarity with CPI Docketing Program a plus.
•Ability to operate standard office equipment such as computer, photocopiers, and fax machines.

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