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Intellectual Property Attorney Assistant
2 months ago
Lexitas Legal Talent Outsourcing is seeking a highly skilled and experienced Trademark Paralegal to join our dynamic team. As a Senior Trademark Paralegal, you will play a critical role in supporting our clients' trademark prosecution and portfolio management needs.
Key Responsibilities- Trademark Filings and Prosecution: Prepare, coordinate, and submit trademark filings and other documents at the United States Patent & Trademark Office (USPTO), Trademark Trial and Appeals Board (TTAB), World Intellectual Property Organization (WIPO), and international trademark offices, collaborating with local counsel as needed.
- International Coordination: Instruct, oversee, and collaborate closely with local counsel in overseas jurisdictions.
- Trademark Portfolio Management: Manage all aspects of national and global trademark prosecution and portfolio administration, including drafting various trademark submissions and supporting materials, aiding in response to office actions, updating trademark office records, monitoring and handling docket deadlines, and regular client updates.
- Client Communication: Engage directly with clients and local counsel on filings, status reports, deadlines, inquiries, and tasks.
- Trademark Clearance: Conduct and evaluate trademark clearance searches.
- Reporting and Charting: Create and update various charts and reports.
- Oppositions and Enforcement: Assist in trademark oppositions, UDRP procedures, DMCA takedown requests.
- Research and Analysis: Review watch notifications, oversee third-party submissions, and research potential enforcement targets.
- Deal Support: Provide assistance on trademark/copyright/domain components of deals, including performing due diligence, preparing disclosure schedules, creating assignments and licenses, maintaining chain of title updates.
- Copyright Applications: Submit and process copyright applications at the U.S. Copyright Office.
- Data Integrity: Maintain data integrity in dockets and records in a systematic manner.
- Special Projects: Support special projects and additional duties as required.
- A bachelor's degree is a must.
- A minimum of 10+ years of experience focusing on trademark prosecution and portfolio management at a law firm or corporate legal department (with at least 5+ years at a law firm); experience with trademark litigation a bonus.
- Proficiency in: U.S. trademark law, USPTO and TTAB regulations, proficiency in Madrid Protocol and foreign trademark laws a plus.
- Comprehensive knowledge of trademark websites and software such as search platforms (e.g. Corsearch, Clarivate) and docket software (e.g. Foundation IP (preferred), Inprotech, WebTMs), alongside MS Office tools and knowledge management systems.
- Outstanding written and verbal communication skills, keen attention to detail, timeliness, efficiency, responsiveness, and workload management.
- Self-motivated with the capacity to work independently in a fast-paced environment, prioritize tasks, perform well under pressure, and devise creative solutions.
- Proven ability to engage and cooperate with colleagues at all levels professionally.
- Strong computer skills, including expertise in Microsoft Word, Outlook, Excel, and PowerPoint. Quick adaptability to new applications and software is crucial.
- Readiness to work overtime when needed.
