Trademark Paralegal

Trademark Paralegal (PERM)

Location: Boston, MA (Hybrid) 
 

Position Summary:

This position requires an experienced, well-organized and independent paralegal with experience in U.S. and foreign trademark prosecution and enforcement. Must be able to work independently and know how to prioritize tasks based on deadlines as well as the changing needs of clients and attorneys. Friendly, flexible, team-oriented demeanor with an ability to work collaboratively with other support staff and attorneys. Provide support to trademark partners and associates along with 3 other very experienced TM paralegals.

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.
• Assist with global trademark clearance efforts and work with the attorneys to develop clearance opinions.
• Review and assess third party search reports.
• Communicate with clients regarding prosecution, enforcement and clearance.
• 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 3 years of experience as a Trademark Paralegal in a law firm or corporate setting.
• Experience with, or willingness to learn, how to conduct US, Canada and international trademark clearance searches using online tools
• 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 3 to 6 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.