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Trademark Paralegal Specialist

2 months ago

St Louis, Missouri, United States AMS Staffing Inc. Full time
Trademark Paralegal Job Description

We are seeking a highly skilled and experienced Trademark Paralegal to join our team at AMS Staffing Inc. in St. Louis, MO.

Job Summary:

The Trademark Paralegal will be responsible for supporting the local IP&T Practitioners and the national IP&T Practice Group. This role will involve preparing and filing U.S. trademark prosecution and maintenance documents electronically with the USPTO, conducting trademark screening searches, and corresponding with clients regarding routine phases of trademark prosecution and maintenance matters.

Responsibilities:

  • Prepare and file U.S. trademark prosecution and maintenance documents electronically with the USPTO, including applications, office action responses, extensions of time, statements of use, affidavits, renewals, assignments, and powers of attorney.
  • 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, 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.
  • 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.