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Trademark Paralegal - Midtown, Manhattan (Remote to start)

Multinational Law Firm New York ,NY
  • Expired: over a month ago. Applications are no longer accepted.
Job Description

Trademark Paralegal

Location: New York, NY (Midtown)

The Organization: Large U.S. Based Multinational Law Firm

Salary & Benefits: Base salary up to 120K; Generous paid overtime and bonus; Medical, Dental and Vision Coverage; Transit Program; generous Paid Time Off; 401K w/match; Life Insurance; exceptional culture.

Summary: Seeking a Trademark Prosecution Paralegal to support a busy New York practice. Candidate must be willing to work independently in a fast-paced, corporate environment. Well-paid overtime can be anticipated.

Key Responsibilities:

  • Run searches on IP holdings (registered trademarks, patents, registered copyrights, domain names) and IP-related litigation

  • Assist with filings and monitor proceedings in USPTO and Trademark Trial and Appeal Board matters

  • Assist attorneys in preparing cost estimates for preparing IP ownership searches and for recording IP assignments

  • Look over information memoranda and company website(s) for company background and IP information/usage

  • Analyze chain of title information for trademarks, patents and copyrights (global)

  • Assist attorneys in reviewing data room materials for documentation regarding registered trademarks, patents, copyrights and domain names

  • Order file wrappers, copies of recorded assignments and security interests, and title documents recorded at government offices

  • Compare company disclosure schedules against firm schedules and summarize discrepancies

  • Draft IP assignments and IP security documents including releases and agreements

  • Review IP assignments to verify proper execution including being notarized, stamped, witnessed, etc.

  • Prepare recordation cover sheets or electronic filings for documents to be recorded at USPTO or Copyright Office

  • Arrange for legalization of assignments for recording in foreign trademark and patent offices

  • Draft instruction letters to foreign associates regarding recording assignments in their countries

  • Correspond with foreign associates and communicate with seller’s and buyer’s IP counsel or in-house contact to obtain necessary documents and information for recording assignments

  • Monitor and maintain trademark prosecution docket for due dates, for responses, maintenance filings, renewals, oppositions and cancellations

  • Draft trademark/service mark applications, affidavits of use, maintenance and renewal filings, and assignment agreements

  • Draft responses to trademark examining attorney’s official action

  • Communicate with foreign trademark counsel and agents regarding registration and maintenance matters

Qualifications:

  • 8+ years Paralegal experience in Trademark Prosecution preferred

  • Bachelor’s Degree strongly preferred

Knowledge of USPTO and TTAB rules, and familiarity with international trademark filing procedures, drafting correspondence, and conducting due diligence reviews of intellectual property

Company Description
One of America's Most Respected Law Firms and Best Employers

Multinational Law Firm

Why Work Here?

One of America's Most Respected Law Firms and Rated Best Employers

One of America's Most Respected Law Firms and Best Employers

Address

Midtown
New York, NY
USA