Briefly ยท 1 day ago
Trademark Paralegal
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Responsibilities
Assist attorneys with both U.S. and foreign trademark prosecution matters.
Draft trademark applications, draft basic office action responses, post-registration renewal documents, and other documents for filing with the USPTO.
Search the USPTO trademark-related databases.
Electronically file trademark applications and other documents with the USPTO.
File Madrid Protocol applications, related prosecution, and maintenance documents.
Review and choose suitable specimens of use for both goods and services, and format specimens for use in electronic filings at the USPTO.
Draft and coordinate execution of Assignments and other formal documents.
Develop strong working relationships with clients and foreign associates and coordinate communication with both.
Maintain trademark docket and prepare reports as needed.
Monitor and manage payment of trademark renewals.
Perform preliminary trademark clearance searches, perform first level review of full trademark searches, perform internet searches for common law use of marks, and assist on due diligence reviews.
Qualification
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Required
Familiarity with searching and locating information in the TMEP regarding USPTO trademark procedures and practices
Familiarity with TTAB procedures and databases
Proficiency in MS Word, Outlook, Excel, and PowerPoint
Familiarity with procedures for billable time in time tracking program
Familiarity with electronic document management systems, iManage a plus
Ability to work independently in a remote setting
Good planning, prioritization, and organizational skills, including attention to detail
Ability to problem solve and use sound judgment in dealing with highly confidential information
Excellent interpersonal, verbal, and written communication skills
5 -7 years of experience handling all aspects of preparing and filing US and foreign trademark applications, office action responses, and related prosecution documents
Preferred
Some experience with copyrights and domain names helpful
Patent prosecution experience a plus
College degree preferred, paralegal certificate helpful