The Trademark Paralegal is a member of the IP Practice Group and is assigned to specific matters, clients, projects and/or attorneys. The Trademark Paralegal is to assist the IP Practice Group to function in a consistent productive manner; is responsive and ensures that all documents received from clients, foreign associates, U. S. Patent and Trademark Office and other government agencies have responded to timely, accurately, and all other day to day responsibilities are being met under established policies and procedures; while exercising discretion and confidentiality in maintaining contact with clients, attorneys and staff. There is an annual billing requirement to this role.
Essential Duties and Responsibilities:
- Ensure policies and procedures are being followed on a day-to-day basis in relation to assigned duties, including client special instructions and in accordance with established firm guidelines.
- Monitor deadlines associated with the U.S. and international dockets, including providing follow-up with attorneys, clients, and management in order to provide adequate time to respond.
- Review daily docket reports in accordance with established firm guidelines and correspond with the IP docket department regarding same.
- Prepare and file trademark applications, statements of use, extensions of time, amendments to allege use, Section 8 &15 declarations, and other filings with the USPTO under attorney supervision.
- Prepare and manage the recordation of assignments and name changes in the U.S. and internationally.
- Receive and act upon client instructions, including confirmation and/or draft response to client inquiries related to US, WIPO and foreign applications.
- Create and maintain electronic worksheets to assist attorneys in managing client requirements as needed.
- Provide support for Trademark Trial and Appeal Board proceedings and appeals.
- Review and analyze trademark watch notices and conduct routine trademark clearance searches.
- Review advertising and marketing materials for proper trademark usage and accuracy of marketing claims and sufficiency of corresponding substantiation.
- Maintain the firm’s official file utilizing the document management system.
- Track and record client-billable time as required meeting minimum billable hour requirements.
- Responsible for maintaining and prioritizing work on a daily basis and communicate if unable to meet daily responsibilities.
- Demonstrate good teamwork skills within and among practice groups, offices, and firm to facilitate efficient delivery of legal
- Participate in the training and professional development of other paralegals in routine practice elements.
- Utilize USPTO and other related government agency electronic resources effectively.
- Willingness and flexibility to work closely with all attorneys and staff as needed.
- Provide back-up support to other team members as needed.
- Perform other duties as assigned.
Knowledge, Skills and Abilities:
- Proficiency with U.S. and international trademark law, including inter-partes matters.
- Proficiency in conducting trademark clearance searches and managing trademark watch notices.
- Possess strong interpersonal skills necessary to communicate and follow instructions effectively from a diverse group of clients, attorneys and staff and provide information with courtesy and tact.
- Ability to self-manage and work independently in a hybrid, and in-office setting.
- Ability to work effectively both independently and with teams to promote consistent and efficient workflow processes.
- Ability to work under pressure while producing a high volume of information with attention to detail while producing an accurate
- Willingness and ability to accept changing assignments and priorities.
- Ability to compose, proofread and edit (e.g., punctuation, grammar, spelling) routine memorandums and correspondence.
- Ability to identify and analyze complex issues and problems and to recommend and implement solutions.
- Strong working knowledge to utilize various online electronic filings with government agencies and to maintain worksheets for
- Proficient in Microsoft Office Products (Excel, Outlook, PowerPoint, Word).
- Strong organizational and administrative skills.
- Ability to search various websites in order to locate information in order to communicate with client or maintain accurate
- information in the firm’s various software applications associated with IP.
- Ability to provide quality client service to both internal and external clients effectively and professionally
- Ability to retrieve and carry items weighing less than 25 pounds.
- Performs other duties as assigned.
Education and/or Experience:
- A minimum of five (5) years of progressive trademark prosecution experience, including docket management, application filings and prosecution in order to gain an understanding to provide support and planning that will ensure a high quality and accurate work product.
- Bachelor’s degree or equivalent specialized training (i.e., paralegal studies or certificate from an ABA recognized program) is preferred.