The Trademark Paralegal will be responsible for managing trademark clearance, prosecution, and transactional tasks. Additionally, the role includes handling trademark disputes to a lesser extent (excluding federal court litigation) and occasionally assisting with copyright matters. The position requires collaboration with lawyers and business professionals within the IP group and demands strong teamwork skills.
Responsibilities
- Support the U.S. trademark registration process in all stages, including conducting trademark clearance searches, filing applications, managing prosecution, and addressing post-registration issues.
- Collaborate with local trademark counsel on filings and disputes in international jurisdictions.
- Assist attorneys with trademark research, including case law, clearance searches, and issue analysis.
- Prepare, draft, and submit trademark applications to relevant trademark offices, ensuring compliance with legal requirements and procedural standards.
- Contribute to due diligence projects related to trademarks and copyrights in corporate transactions.
- Aid the docketing team in managing prosecution and enforcement deadlines using CPI/Docketing software.
- Ensure the accuracy and quality of all trademark-related documents, correspondence, and filings by reviewing for completeness, consistency, and adherence to established procedures.
- Assist with trademark disputes, including opposition proceedings.
- Provide additional support for trademark and copyright matters as needed.
Qualifications
- Minimum of FIVE years of U.S. and Foreign Trademark Paralegal experience in a law firm setting.
- BS/BA Requited, Paralegal Certification a plus.
- Working knowledge of CPI or similar docketing software.
- Ability to conduct searches and research using various tools such as SAEGIS, as well as the
- USPTO and WIPO databases.
- Ability to work overtime as needed.
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