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IP Trademark Paralegal

3 months ago

Detroit, United States Powerwell Full time

Powerwell is a leading recruitment firm helping our clients discover top talent.


Our client is a premier business law firm, based in Michigan with an international practice and recently recognized in Michigan as one of the 101 Best and Brightest Places to Work.


We are recruiting for an experienced Trademark Paralegal.


The Trademark Paralegal will utilize strong knowledge and understanding of various domestic and foreign trademark prosecution matters to coordinate and assist with U.S. and foreign trademark registration efforts. Will be responsible for managing trademark portfolios, trademark clearance, US and foreign trademark prosecution, and US and foreign contentious matters. This includes multi-jurisdictional filing programs, constant communication with clients and foreign counsel concerning clearance, filing instructions, office actions, potential conflicts and similar prosecution matters. Will use appropriate computer software applications proficiently to conduct and analyze preliminary searches, including on-line investigations, and assist with comprehensive searches. Will assist with infringement and clearance investigations. Will handle all aspects of U.S. trademark prosecution. Will prepare Assignments of trademark registrations and applications and file same with USPTO and foreign offices. Will oversee execution and legalization of documents. Will provide litigation support to in-house trademark attorneys as well as U.S. and foreign counsel, including gathering and organizing evidence. Will enter and update data in trademark database (PATTSY) and generate database reports as needed. Will be depended on to quickly get up to speed on department processes and needs, as well as take initiative to follow-up and take necessary action.


ADDITIONAL INFORMATION:

·        Looking to fill this role in any of the following offices - Ann Arbor, MI; Bloomfield Hills, MI; Chicago, IL; Washington D.C.

·        Hybrid/4 days in office for the first 6 months. 3 days in the office, 2 days at home is standard firm policy.


RESPONSIBILITIES:

  • Prepare and file U.S. trademark prosecution and maintenance documents electronically with the USPTO including but not limited to: applications, office action responses, extensions of time, statements of use, affidavits, renewals, assignments and powers of attorneys.
  • Conduct trademark screening searches using third search party platforms and common law searches.
  • Correspond with clients regarding routine phases of trademark prosecution and maintenance matters.
  • Prepare and file trademark documents with WIPO including but not limited to applications for International Registration, responses to Notices of Irregularity, renewals, assignments and powers of attorney.
  • Work with and correspond with foreign counsel in connection with prosecution and maintenance of trademark applications/registrations outside of the United States, including attending to notarization and legalization of documents.
  • Prepare and record ownership and change of name documents related to trademarks.
  • Conduct due diligence on trademark portfolios.
  • Prepare and file customs registrations and renewals with the U.S. Customs and Border Patrol.
  • Prepare cost estimates for new filings.
  • Assist with trademark enforcement matters including working with and corresponding foreign counsel regarding potential oppositions, cancellations and cease & desist letters.
  • Assist with monitoring attorney dockets and working with internal personnel to manage deadlines.
  • Record billable hours timely and accurately utilizing practice/firm billing protocols.
  • Perform other duties as necessary to fully meet the requirements of the position based on practice/client needs.
  • Quickly get up to speed on department processes and needs, as well as take initiative to follow-up and take necessary action.


JOB QUALIFICATIONS:

  • Experienced in trademark prosecution, maintenance and renewal, both U.S. and foreign preferred.
  • Bachelor's Degree in the legal industry and/or a Legal Assistant Certificate from an ABA approved institution.
  • May consider significant experience in lieu of a degree.
  • Proficient in Word, Excel, and the ability learn quickly how to use other applications used by the department.
  • Proficient in the use of the Internet for conducting research, including a strong knowledge of trademark clearance databases, as well as trademark investigations – online and through investigations.
  • Prefer experience with PATTSY (or an equivalent docketing software), Saegis, Lexis/Nexis, Westlaw, and similar research tools.
  • Trademark search and clearance experience, both preliminary and comprehensive.
  • High level of communication skills requiring social sensitivity and in-depth knowledge of department procedures in order to communicate effectively with staff and management within and outside the department and external contacts, including clients, foreign associates and vendors.
  • Ability to independently multi-task and take ownership of work in a fast-paced environment
  • Capable of following and conveying instructions effectively with a high degree of courtesy and tact including ability to independently initiate follow-up.
  • Must be a problem solver, willing to work and think with independence, handle confidential information with discretion, and accept responsibility for producing work that is consistently complete, timely, effective and accurate.
  • Excellent organizational and analytical skills; detail oriented. Strong writing skills (a writing sample may be requested).