Trademark Paralegal

Hybrid Position in Boston, Stamford, Hartford or NYC

Responsibilities:

• Manage all phases of routine U.S. and foreign trademark prosecution.
• Assist with the preparation and filing with the U.S. Patent and Trademark Office of U.S. trademark applications, Office Action Response, Statements of Use, Section 8 & 15 Affidavits, Renewals, and related documents.
• Assess acceptable specimens of use for submission to the USPTO
• Assist with copyright and domain matters.
• Assist with the management of U.S. and foreign opposition/cancellation actions and other enforcement efforts.
• Manage trademark docket and provide support and reminders to attorneys; manage and participate in regular docket meetings with attorneys.
• Conduct preliminary trademark clearance searches online and PTO website.
• Participate in trademark filing strategy discussions.
• Oversee U.S. and foreign assignment recordation projects as needed.
• Assist in preparation and filing of UDRP and TTAB actions.
• Liaise with foreign agents regarding foreign filing requirements for trademark prosecution and maintenance.
• Prepare reporting and instruction letters to clients.
• Create Trademark Status Charts as necessary.
• Conduct regular status checks on trademark portfolios to keep matters moving forward.

Requirements / Abilities

• Minimum of five years of experience as a Trademark Paralegal in a law firm or corporate setting.
• Strong interpersonal skills; must have clear and concise verbal and written communication skills and be able to receive and provide information with courtesy and tact.
• Ability to follow instructions effectively from a diverse group of clients, attorneys, and entire trademark team, and be able to multitask and work independently.
• Strong analytical and reasoning skills; Intuitive problems solver and ability to identify and suggest solutions to challenging issues.
• Strong organizational skills and attention to detail, and the ability to prioritize and work well under pressure, juggle multiple tasks, and meet deadlines.
• Follow through on assignments to completion.
• Highly motivated, positive and resilient attitude, ability to work independently and within a collaborative team environment.
• Ability to work efficiently in a virtual environment. Familiarity with Madrid Protocol and WIPO filing rules and processes.

Minimum Qualifications/Requirements:

Bachelor’s Degree and/or 5 to 10 years of relevant and successful experience as a Trademark paralegal.

Computer skills: Proficient in Outlook, Word, Excel, iManage or other document management system, knowledge of trademark docketing systems, experience with the USPTO websites.

Salary is negotiable for the right person