Trademark Paralegal

3 weeks ago

New York, United States Lexitas Legal Talent Outsourcing Full time

Our client, a prestigious, national law firm, seeks a Trademark Paralegal to be based in their Chicago, St. Louis, Washington, D.C. or New York office. This is a hybrid position.

This position will support the local IP&T Practitioners and the national IP&T Practice Group. This position will report to the Practice Group Leader, with daily work performed primarily under the direction of assigned practice group lawyers and/or paraprofessionals.


Responsibilities:

  • Prepare and file U.S. trademark prosecution and maintenance documents electronically with the USPTO including but not limited to: applications, office action responses, extensions of time, statements of use, affidavits, renewals, assignments and powers of attorneys
  • Conduct trademark screening searches using third search party platforms and common law searches
  • Correspond with clients regarding routine phases of trademark prosecution and maintenance matters
  • Assist attorneys in TTAB filings, i.e. extensions of time to file a notice of opposition, consent motions
  • Prepare and file trademark documents with WIPO including but not limited to 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:

  • 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
  • Proficiency in Microsoft Office Suite, PDF creation tool(s), document management software, Elite or other timekeeping software, Internet required
  • Excellent client service, ability to work overtime and travel as needed


Compensation:

Competitive salary ($85k-$120k) and benefits package including medical, dental, vision, 401k, profit sharing, short-term/long-term disability, life insurance, tuition reimbursement, paid time off, paid holidays and discretionary bonuses.

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