Position Overview:You should have at least five years of experience working on and managing a US and global trademarks portfolio in a reputable law firm that deals in IP laws or in a company with a substantial trademarks portfolio. You should hold a Bachelor's Degree or an Associate's Degree with a Paralegal Studies Certificate from an ABA approved program.
As a trademark paralegal, you are expected to complete tasks such as preparing trademark status summaries, maintaining the docket/database system, conducting trademark searches, drafting trademark registration applications and renewal applications, researching procedural matters and case law, and assisting the responsible attorney in TTAB opposition and related proceedings.
You will be expected to keep organize and keep track of all timelines in connection with the entire lifecycle of a trademark, including the searching, prosecution, conflict, enforcement and renewal activities.
Function Specific Activities:
Function Related Key Responsibilities:
? Coordinate and manage trademark filings;
? Prepare trademark and copyright applications (if applicable) and monitor their status;
? Perform searches regarding trademark availability and related issues;
? Prepare drafts of correspondence and documents responding to trademark agencies and offices relating to trademark application and registration filings;
? Monitor all timelines in connection with the prosecution of marks, office actions, oppositions and appeals.
? Monitor trade dress and trademark infringement matters including drafting cease and desist letters and preparing complaints as necessary;
? Monitor domain name registrations for clients, preparing cease and desist letters regarding cybersquatting and following up with the filing of ICANN proceedings as necessary;
? Perform legal research via Saegis, and other on-line services.
? Attend meetings and undertaking conference calls with clients and other contacts globally;
? Respond to general enquiries on trade mark prosecution;
? Develop working relationships with the relevant brand managers and other clients;
? Handle renewals
? Clear and concise communication - written and verbal
? Technologically savvy and numbers literate - ability to use Microsoft Word, Powerpoint, and Excel
? Organized, with a keen eye for detail
? Strong team player
? Bachelor's Degree or an Associate's Degree with a Paralegal Studies Certificate from an ABA approved program
? 5+ years of experience in trademark law
Years of Experience:
- GROWTH MINDSET: Demonstrates curiosity. Welcomes failure as a learning opportunity.
- SMART RISK: Makes bold decisions/recommendations.
- EXTERNALLY FOCUSED: Understands the upstream and downstream implications of his/her work. Tracks and shares external trends, best practices or ideas.
- PERFORMANCE DRIVEN AND ACCOUNTABLE: Has high performance standards. Outperforms her/his peers.
- FAST/AGILE: Removes barriers to move faster. Experiments and adapts. Thrives under pressure and fast pace.
- EMPOWERED: Brings solutions instead of problems. Challenges the status quo. Has the courage to take an unpopular stance.