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Trademark Prosecution Paralegal

3 months ago

Los Angeles, United States Kilpatrick Townsend & Stockton Full time
Description

Kilpatrick, a large international law firm, is seeking a Trademark Prosecution Paralegal for our Intellectual Property Department in our San Francisco, Walnut Creek, San Diego or Los Angeles office with the opportunity for a flexible, partially remote schedule. This position will be part of our team of attorneys, paralegals and support staff providing a high level of service to both internal and external clients. At Kilpatrick we are one team where each person plays an integral role in serving the needs of our clients. The firm has a strong dedication to its employees, values, diversity and inclusion initiatives and commitment to the community.

ESSENTIAL JOB FUNCTIONS:

  • Review docket for deadlines; understand docket and deadlines and action needed on each file.
  • Conduct electronic recordation of assignment documents; review Notice of Recordation and report same to client and prepare client status reports; work with and manage large global trademark portfolios.
  • Comprehend chain of title in U.S. trademarks and ability to perfect same.
  • Assist with trademark clearance projects, including U.S. screening and full searches and international screening and formal counsel searches.
  • Prepare and file U.S. trademark applications, including electronic filings with follow through to registration and post-registration maintenance and renewals.
  • Coordinate with foreign counsel on international clearance, filing, maintenance, and renewal matters: oversee processing of foreign associates' invoices for payment and prepare reporting letters to client.
  • Effect portfolio transfers and manage multi-client portfolios.
  • Prepare and file powers of attorney and letters of instruction.
  • Assist in trademark filing strategy discussions and due diligence.
  • Assist with preparation and filing of responses of Office Actions.

KNOWLEDGE/SKILLS REQUIRED:

  • Bachelor's degree or equivalent experience required.
    • Preferred: Paralegal Certification.
  • Minimum 5 years of Trademark work experience in a professional environment which includes progressive responsibility in managing Trademark and litigation matters.
    • Preferred: Law firm experience

  • Extensive knowledge of U.S. trademark rules and procedure; working knowledge of national laws of other countries; knowledge of Paris Convention and deadlines set therein.
  • Knowledge of filing requirements for convention (foreign) applications.
  • Proficient with electronic research tools such as Dialog, Saegis, PTO and WIPO; and conduct preliminary trademark searches.
  • High level of proficiency with technology including Microsoft Office Suite applications, Adobe Acrobat, Lexis/Nexis, Westlaw (and Dialog) and other internet research tools.
  • Excellent organizational skills, attention to detail, and the ability to multi-task.
  • Highly effective written and oral communications.
  • Creative problem-solving abilities.
  • Work independently, taking initiative to move projects to conclusion.
  • Maintain professional demeanor in stressful situations.
  • Reliable and dependable team player.
  • Maintain confidentiality of client information.
  • Ability to perform well under pressure.

This is a full-time, regular position with a multi-faceted health benefit package including medical, dental, and vision. The firm also offers life insurance, short term disability plans and retirement plans in addition to holidays and paid time off. The hourly rate for this position in California only is $51.38 to $77.13.

Selected applicants will be contacted. Kilpatrick is an Equal Opportunity Employer.

For more information about our firm, please visit our website at www.ktslaw.com.

Kilpatrick Townsend & Stockton LLP is committed to equal employment opportunity for all persons, regardless of race, color, religion, sex or gender, national origin, age, veteran status, disability, sexual orientation, gender identity, or any other basis prohibited by applicable law.

Equal Opportunity Employer/Protected Veterans/Individuals with Disabilities

The contractor will not discharge or in any other manner discriminate against employees or applicants because they have inquired about, discussed or disclosed their own pay, or the pay of another employee or applicant. However, employees who have access to the compensation information of other employees or applicants as a part of their essential job functions cannot disclose the pay of other employees or applicants to individuals who do not otherwise have access to compensation information, unless the disclosure is (a) in response to a formal complaint or charge, (b) in furtherance of an investigation, proceeding , hearing, or action, including an investigation conducted by the employer, or (c) consistent with the contractor's legal duty to furnish information. 41 CFR 60-1-35(c).

Equal Opportunity Employer/Protected Veterans/Individuals with Disabilities

The contractor will not discharge or in any other manner discriminate against employees or applicants because they have inquired about, discussed, or disclosed their own pay or the pay of another employee or applicant. However, employees who have access to the compensation information of other employees or applicants as a part of their essential job functions cannot disclose the pay of other employees or applicants to individuals who do not otherwise have access to compensation information, unless the disclosure is (a) in response to a formal complaint or charge, (b) in furtherance of an investigation, proceeding, hearing, or action, including an investigation conducted by the employer, or (c) consistent with the contractor's legal duty to furnish information. 41 CFR 60-1.35(c)