Trademark Paralegal

Purpose

The Trademark Paralegal will manage trademark prosecution dockets, monitor and follow up on dates associated with the US and foreign trademark prosecution docket, including clearing dates and providing follow-up with attorneys, paralegals, clients, and foreign associates in order to provide adequate time to respond.

Essential Functions

1. Manage trademark prosecution dockets; monitoring and following up on dates associated with the US and foreign trademark prosecution docket, and providing follow-up with attorneys, paralegals, clients, and foreign associates in order to provide adequate time to respond.
2. Prepare domestic, foreign and WIPO trademark documents for filing, such as new applications, office action responses, statements of use, requests for extensions of time, declarations of use and incontestability, renewal applications, priority documents, and powers of attorney; preparing and recording assignment and change of name documentation.
3. Prepare routine and complex correspondence to clients and foreign counsel regarding trademark matters.
4. Conduct trademark clearance/knockout searches using USPTO tools.
5. Compile filing details needed for new trademark filings, including drafting descriptions of goods and services in appropriate Classes, and pulling specimens showing trademark use from client’s websites.
6. Retrieve information from databases and run relevant reports.
7. Maintain positive relations with internal clients and co-workers and contributing to the self-directed team structure to assist with overflow and specialized tasks within guidelines set by the firm.
8. Enter the billable time and expenses for clients utilizing a billing system
9. Perform all other tasks and duties as assigned.

Qualifications

1. Bachelor's degree OR Paralegal Certificate required.
2. Minimum of 2-3 years’ experience of trademark prosecution required.
3. Experience with preparing and filing copyright applications with USCO preferred.
4. Experience with reviewing, analyzing, and reporting trademark watch notices to clients preferred.
5. Experience with docketing software, including docketing and de-docketing US and foreign TM deadlines required.
6. Must have strong working knowledge of Microsoft Office Suite, including MS Word, Outlook, Excel, PowerPoint and Adobe Pro required; knowledge of Salesforce is preferred.
7. Ability to read and write English fluently required.
8. Excellent knowledge of grammar, spelling and punctuation required.

Behavioral Competencies

1. Ability to write and demonstrate exceptional communication skills required.
2. Ability to communicate professionally and adapt interpersonal skills to a variety of audiences required.
3. Ability to demonstrate excellent multi-tasking and time-management skills required.
4. Ability to shift priorities quickly without compromising deadlines or quality required.
5. Ability to proactively identify and address problems quickly required.
6. Ability to demonstrate attention to detail required.
7. Ability to work independently and in a team by assisting co-workers when required.
8. Ability to thrive in high pressure environments required.
9. Ability to communicate effectively with people and present a positive, professional image required.
10. Ability to demonstrate behavior on a consistent basis that supports company values.
11. Ability to work remote from a US residential address, if not working in a designated company office.
12. Expected to be available and communicative during normal business work hours with flexibility to include evenings and weekends.
13. Must have a professional and distraction-free workspace that is free from safety hazards.