Trademark Paralegal

The Trademark Paralegal is assigned to specific matters, clients, projects and/or specified routine activities and determines and prepares appropriate work product, sometimes with minimal attorney supervision. The Trademark Paralegal has a minimum billable requirement of 1600 hours per year.

Job Responsibilities

• Conducts preliminary US searches and worldwide searches for trademark availability
• Reviews and distributes, as needed, trademark watch notices for all clients to attorneys for further review and follow up
• Conducts trademark use investigations and other due-diligence related activities
• Assists in infringement, opposition, and related proceedings, including discovery-related activities, cite checking and filing
• Prepares draft reporting letters and responses to Office Actions for attorney review
• Reviews specimens and prepares draft declarations
• Coordinates take-down notices with numerous social media platforms
• Prepares formal assignments and agreements for trademark matters and records relevant materials with the United States Patent and Trademark Office
• Prepares trademark status summary reports
• Prepares worldwide cost estimates for filing and maintenance of trademarks
• Actively participates in risk management by meeting all internal and statutory due dates, careful review of file histories and client instructions, accurate preparation of documents, file maintenance/handling procedures, timeliness/responsiveness, and overall quality of service 
• Coordinates relationships with several vendors, and reviews agent and vendor invoices in compliance with firm’s policies and procedures
• Handles non-routine intellectual property related projects as needed

Qualifications

Education 

The position requires a Bachelor’s Degree in a related field.  Equivalent training and experience may substitute for education.

Experience

The position requires a minimum of three (3) years of increasingly responsible, directly related experience during which knowledge, skills and abilities applicable to the position were demonstrated.