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Trademark Paralegal

2 months ago


New York, New York, United States AMS Staffing Inc. Full time

Job Title: Trademark Paralegal

Job Type: Full-time

Location: Remote (candidates must live within a commutable distance)

Salary: $80,000 - $110,000 per year

Hybrid: 3 days in office/2 days remote

Experience: 4-10 years

Education: Bachelor's Degree required

Job Description:

Company Overview: AMS Staffing Inc. is a leading staffing agency specializing in intellectual property and technology placements.

Job Summary: We are seeking a highly skilled Trademark Paralegal to join our team. The successful candidate will support the local IP&T Practitioners and the national IP&T Practice Group.

Responsibilities:

  • Prepare and file U.S. trademark prosecution and maintenance documents electronically with the USPTO.
  • Conduct trademark screening searches using third-party platforms and common law searches.
  • Correspond with clients regarding routine phases of trademark prosecution and maintenance matters.
  • Assist attorneys in TTAB filings, including extensions of time to file a notice of opposition and consent motions.
  • Prepare and file trademark documents with WIPO, including applications for International Registration and responses to Notices of Irregularity.
  • Work with and correspond with foreign counsel in connection with prosecution and maintenance of trademark applications/registrations outside of the United States.
  • 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.
  • Prepare and file copyright applications for registration.
  • 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.

Requirements:

  • Attainment of at least a Bachelor's Degree is required.
  • 4 to 10 years working in a trademark department with at least 4 years of trademark prosecution-related duties; experience with copyrights would be a plus.
  • Passionate about learning new skills and intellectual property.
  • Exceptional writing, editing, research, organizational, and analytical skills and attention to detail.
  • Expert in Microsoft Excel, PowerPoint, and Word.
  • Ability to work well under pressure and handle multiple, simultaneous tasks efficiently.
  • Strong work ethic, including willingness to work evenings and weekends as needed.
  • Professional demeanor, attention to detail, and great organizational skills are essential.
  • Ability to provide direction and training to junior team members.
  • Ability to maintain discretion and privacy with confidential matters and documents.
  • Ability to meet minimum billable hourly requirement.