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Trademark Paralegal Duties: The candidate will order, conduct and review trademark searches and prepare preliminary summaries. Prepare documents for attorney review and filing with USPTO including Applications, Office Action Responses, and Amendments to Allege Use, Declarations of Use and Incontestability, Applications for Renewal, and Extensions of Time to Oppose and related Notices and Petitions. Monitor watch notices Oversee execution and legalization of documents. Examine investigative summaries and prepare reports and recommendations. Process invoices from foreign associates and other vendors. Correspond with foreign associates regarding searches, filing and prosecuting applications, oppositions, registration maintenance, and transfers. Formulate appropriate identifications of goods and services and identify appropriate specimens. Communicate with clients regarding trademark maintenance requirements. Assist with trademark due diligence, prepare and record assignments and undertake another chain of title activities related to corporate transactions. Monitor deadlines and coordinate with the docketing team (docketing not required). Coordinate trademark opposition, cancellation, and other trademark disputes.
Qualifications: A Bachelor's degree/Paralegal Certificate preferred with 5 years of related experience in a law firm or law department including all aspects of USPTO trademark work (prosecution, maintenance, and renewals) as well as TTAB proceedings (oppositions, cancellations). Must be proactive, dedicated, positive, and energetic. Experience handling large portfolios. Strong computer skills. Resourceful and creative self-starter. Balance competing for active deadlines in a fast-paced environment. Articulate with excellent communication skills. Superior organizational skills. Ability to work independently and as part of a team. Strong interpersonal skills. Fluent with SAEGIS, PTO TEAS System, Microsoft Word, Excel, and Outlook. Domain name experience is a plus. Advertising review experience is a plus.
