Senior Trademark Paralegal

Senior Trademark Paralegal (15 years +)

Law Firm. RESPONSIBILITES • Prepare and file U.S. trademark prosecution and maintenance documents electronically with the USPTO including but not limited to: applications, office action responses, extensions of time, statements of use, affidavits, renewals, assignments and powers of attorneys • Conduct trademark screening searches using third search party platforms and common law searches • Correspond with clients regarding routine phases of trademark prosecution and maintenance matters • Prepare and file trademark documents with WIPO including but not limited to applications for International Registration, responses to Notices of Irregularity, renewals, assignments and powers of attorney • Work with and correspond with foreign counsel in connection with prosecution and maintenance of trademark applications/registrations outside of the United States, including attending to notarization and legalization of documents • Prepare and record ownership and change of name documents related to trademarks • Conduct due diligence on trademark portfolios • Prepare and file customs registrations and renewals with the U.S. Customs and Border Patrol • Prepare cost estimates for new filings • Assist with trademark enforcement matters including working with and corresponding foreign counsel regarding potential oppositions, cancellations and cease & desist letters • Assist with monitoring attorney dockets and working with internal personnel to manage deadlines • Record billable hours timely and accurately utilizing practice/firm billing protocols • Perform other duties as necessary to fully meet the requirements of the position based on practice/client needs • Quickly get up to speed on department processes and needs, as well as take initiative to follow-up and take necessary action. JOB QUALIFICATIONS • Experienced in trademark prosecution, maintenance and renewal, both U.S. and foreign preferred. • Bachelor's Degree in the legal industry and/or a Legal Assistant Certificate from an ABA approved institution. • May consider significant experience in lieu of a degree. • Proficient in Word, Excel, and an ability learn quickly how to use other applications used by the department. • Proficient in the use of the Internet for conducting research, including a strong knowledge of trademark clearance databases, as well as trademark investigations – online and through investigations. • Prefer experience with PATTSY (or an equivalent docketing software), Saegis, Lexis/Nexis, Westlaw, and similar research tools. • Trademark search and clearance experience, both preliminary and comprehensive. • High level of communication skills requiring social sensitivity and in-depth knowledge of department procedures in order to communicate effectively with staff and management within and outside the department and external contacts, including clients, foreign associates and vendors. • Ability to independently multi-task and take ownership of work in a fast-paced environment • Capable of following and conveying instructions effectively with a high degree of courtesy and tact including ability to independently initiate follow-up. • Must be a problem solver, willing to work and think with independence, handle confidential information with discretion, and accept responsibility for producing work that is consistently complete, timely, effective and accurate. • Excellent organizational and analytical skills; detail oriented. Strong writing skills (a writing sample may be requested).