The Trademark Paralegal will manage domestic and foreign trademark filings, conduct clearance searches, correspond with clients, and assist in litigation support.
Description
Our client is seeking an IP/IT paralegal for their New York office. Three years of experience required. Candidates must have experience in both domestic trademark prosecution and oppositions, as well as involvement in managing similar foreign filings through foreign counsel. Candidates must also have the ability to perform trademark clearance searches and to organize and coordinate mail, correspondence (internally and externally) and manage an active calendar. PowerPoint and Excel skills important.
ESSENTIAL DUTIES AND RESPONSIBILITIES
- Conduct clearance searches using online databases, and review and analyze cited references for potential conflicts.
- Prepare and file trademark applications, amendments, statements of use, assignments, renewal applications, and other trademark-related documents with the United States Patent & Trademark Office (USPTO) and foreign trademark offices.
- Manage and update the trademark docket, including ensuring that all trademark-related deadlines are accurately recorded and monitored.
- Correspond with clients to report the status of active matters and to respond to client inquiries.
- Provide support in litigation and enforcement matters, including preparing exhibits and discovery materials, and conducting research as needed.
- Additional tasks as necessary in support of the department.
Requirements
QUALIFICATIONS
- Strong computer skills; Computer Packages Inc. (CPI), SAEGIS, MS Office (Word, Excel, Outlook) experience required; database experience a plus.
- Highly motivated, pleasant individual with professional demeanor and appearance.
- Must be able to exercise independence and good judgment, think creatively to solve problems, and demonstrate excellent attention to detail.
- Excellent written and oral communication skills.
- Must maintain a high quality work product, have the ability to schedule work to meet department deadlines and be able to perform job responsibilities under pressure efficiently, productively and in a professional manner.
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