Trademark Paralegal Specialist

2 weeks ago

Washington DC USA, United States Crowell & Moring Full time
Job Title: Trademark Paralegal

Crowell & Moring LLP is a leading international law firm with offices in the United States, Europe, MENA, and Asia. We represent clients in litigation and arbitration, regulatory and policy, intellectual property, and transactional and corporate matters.

Job Summary

The Temporary Trademark Paralegal will be assigned to specific matters, clients, projects, and/or routine activities. The successful candidate will determine and prepare appropriate work product, sometimes with minimal attorney supervision.

Key Responsibilities
  • Conduct preliminary US searches and worldwide searches for trademark availability
  • Review and distribute trademark watch notices for all clients to attorneys for further review and follow-up
  • Conduct trademark use investigations and other due-diligence related activities
  • Assist in infringement, opposition, and related proceedings, including discovery-related activities, cite checking, and filing
  • Prepare draft reporting letters and responses to Office Actions for attorney review
  • Review specimens and prepare draft declarations
  • Coordinate take-down notices with social media platforms
  • Prepare formal assignments and agreements for trademark matters and record relevant materials with the United States Patent and Trademark Office
  • Prepare trademark status summary reports
  • Prepare worldwide cost estimates for filing and maintenance of trademarks
  • Participate in risk management by meeting internal and statutory due dates, reviewing file histories, and ensuring accurate document preparation
  • Coordinate relationships with vendors and review agent and vendor invoices in compliance with firm policies and procedures
  • Handle non-routine intellectual property projects as needed
Requirements
  • General knowledge of domestic and international trademark prosecution law
  • Ability to prepare a high volume of accurate and complete documents meeting US Trademark Office requirements
  • Ability to identify and meet deadlines based on trademark office correspondence, client instructions, and other documents, and manage associated risks by coordinating with attorneys to file in advance of due dates whenever possible
  • Intermediate PC knowledge, MS Word, PDF conversion tools, MS Outlook, and document management software
  • Intermediate knowledge of equipment, including scanners, copiers, and facsimile machines
  • Basic knowledge of MS Excel, PowerPoint, computerized docketing, and billing systems
  • Ability to conduct legal research regarding US trademark law rules and procedures
  • Ability to organize and prioritize work in a dynamic and complex environment to meet deadlines and daily requirements
  • Ability to communicate persuasively, both orally and in writing
  • Ability to analyze and interpret information from various sources, apply critical and creative thinking to draw conclusions or develop solutions to complex problems
  • Proven leadership capabilities in intellectual property areas
  • Ability to provide quality client service to internal and external contacts regarding complex matters, requiring patience, creativity, and discretion
  • Interpersonal skills to communicate information with tact and courtesy
  • Ability to follow instructions effectively from diverse groups of clients, attorneys, and staff
  • Flexibility regarding work schedule and availability for overtime as requested to accommodate client and attorney business needs
  • Ability to work effectively both independently and with others in a cooperative, enthusiastic, and friendly manner to accomplish position functions and participate in team efforts
  • Ability to perform required non-billable administrative tasks as needed
Education and Experience

The position requires a Bachelor's Degree in a related field. Equivalent training and experience may substitute for education. A minimum of five (5) years of increasingly responsible, directly related experience is required, during which knowledge, skills, and abilities applicable to the position were demonstrated.

Crowell & Moring LLP offers a competitive compensation and comprehensive benefits package. Our benefits include healthcare, vision, dental, retirement, and all-purpose leave and progressive options such as back-up childcare, wellness programs, cultural events, and social activities. We take great pride in our positive, friendly culture that rewards hard work and success, at the same time recognizing the importance of family and community service.

EOE m/f/d/v
Crowell & Moring LLP participates in the E-Verify program.

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