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Trademark Paralegal Specialist

1 month ago


Washington, Washington, D.C., United States Dinsmore Full time
Job Summary

Dinsmore is seeking a highly skilled Trademark Paralegal to provide support to the attorneys in the Intellectual Property Department. The ideal candidate will have a strong understanding of trademark law and procedures, as well as excellent communication and organizational skills.

Key Responsibilities
  • Correspond with foreign associates regarding searching, filing, maintaining, and enforcing trademarks of clients
  • Search trademark registrations in USPTO and various foreign trademark offices
  • Conduct research to gather and store information regarding use of trademarks for enforcement and maintenance
  • Review and revise affidavits/declarations/oppositions to ensure accuracy and completeness of client information
  • Prepare, file, and monitor trademark applications
  • Draft responses to office actions
  • Draft oppositions to applications for conflicting trademarks
  • Draft affidavits of use and file with the USPTO
  • Draft renewal applications
  • Prepare and/or obtain documents for legalization
  • Review and organize files, reviewing docket for deadlines
  • Assist with copyright filings
  • Assist with preparing trademark-related agreements
Requirements
  • Proficiency with the USPTO's online tools, including Trademark Electronic Application System (TEAS) and online tools of the Assignment Branch and the Trademark Trial and Appeal Board (TTAB), preferred
  • Domestic and foreign filing experience preferred
  • General knowledge of intellectual property filing, and prosecution rules/regulations is required
  • Experience with Anaqua docketing system preferred
  • High attention to detail and accuracy of work
  • Superior verbal and written communication skills
  • Demonstrated ability to work professionally and confidentially with a variety of personalities from all levels of an organization
  • Proven organizational and multi-tasking skills
  • Independent, action-oriented thinker who will successfully undertake and complete projects and major tasks with limited supervision and work with other practice assistants as a team
  • Strong work ethic and commitment to excellence and professionalism
  • Communicate effectively and professionally (verbal and written)
  • Must be dependable and hardworking team player
  • Ability to prioritize work
  • Must have a college degree, paralegal certificate, or relevant work experience
  • Two or more years of trademark experience preferred

Dinsmore is an Equal Opportunity Employer.