Trademark Paralegal in Boston, MA| LawFirmStaff

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Title : Trademark Paralegal

Location : Massachusetts - Boston
Refer to Job # GBPF862079


Salary: Salary is commensurate with experience. Law Firm is seeking a Trademark Paralegal to join our Intellectual Property team in Boston or New York. This position requires an independent and diplomatic individual, with prior experience in trademark prosecution. The Trademark Paralegal will: * Conduct preliminary trademark database searches on SAEGIS * Commission comprehensive searches from trademark search vendors * Prepare and file trademark applications before the PTO, including collecting and reviewing supporting documents/materials * Prepare and file Madrid Protocol applications * Prepare and file other routine trademark documents, including statements of use and extensions of time to file statements of use, and post-registration maintenance filings and renewals * Prepare and record trademark and copyright assignment documents * Correspond with foreign trademark agents regarding foreign trademark prosecution matters and contentious proceedings * Communicate with clients regarding requirements for submitting trademark applications, non-substantive Office Actions, and reporting changes to the status of trademark applications * Prepare trademark status reports and trademark schedules upon request from client or attorney * Communicate with the PTO * Instruct docketing team on updates to trademark database, and review and update docket calendar reports * Participate in regularly scheduled paralegal and practice group meetings * Assist with filings in contentious matters before the Trademark Trial and Appeal Board * Record trademark and copyright registrations with U.S. Customs * Assist with preparation of copyright applications * Assist on litigation matters and IP due diligence matters, as needed Job Requirements: * At least 2 years of trademark prosecution experience * Working knowledge of U.S. Patent and Trademark Office and U.S. Copyright Office rules and procedures, including the Trademark Manual of Examining Procedure * Strong familiarity with PTO TEAS forms and SAEGIS search tools; familiarity with ESTTA forms also helpful * Familiarity with Foundation IP and First to File docketing and file management platforms preferred; familiarity with Global IP Estimator also helpful * Excellent oral and written communication skills * Strong attention to detail with the ability to manage multiple priorities * Ability to establish and maintain good working relationships with clients, foreign associates, and all levels of firm personnel and to handle confidential information sensitively and discreetly * Ability to work independently and as part of a team in a fast-paced environment, while demonstrating initiative, diplomacy, and composure when under pressure * An appreciation for Law Firm's values and commitment to diversity, equity, and inclusion. Law Firm is looking for a Trademark Paralegal to join our Intellectual Property team in Boston or New York. This position requires an independent and diplomatic individual, with prior experience in trademark prosecution. The successful candidate will have: * At least 2 years of trademark prosecution experience * Working knowledge of U.S. Patent and Trademark Office and U.S. Copyright Office rules and procedures, including the Trademark Manual of Examining Procedure * Strong familiarity with PTO TEAS forms and SAEGIS search tools; familiarity with ESTTA forms also helpful * Familiarity with Foundation IP and First to File docketing and file management platforms preferred; familiarity with Global IP Estimator also helpful * Excellent oral and written communication skills * Strong attention to detail with the ability to manage multiple priorities * Ability to establish and maintain good working relationships with clients, foreign associates, and all levels of firm personnel and to handle confidential information sensitively and discreetly * Ability to work independently and as part of a team in a fast-paced environment, while demonstrating initiative, diplomacy, and composure when under pressure * An appreciation for Law Firm's values and commitment to diversity, equity, and inclusion. Law Firm is looking for an experienced Trademark Paralegal to join our Intellectual Property team in Boston or New York. This position requires an independent and diplomatic individual, with prior experience in trademark prosecution. The Trademark Paralegal will be responsible for: * Conducting preliminary trademark database searches on SAEGIS * Commissioning comprehensive searches from trademark search vendors * Preparing and filing trademark applications before the PTO, including collecting and reviewing supporting documents/materials * Preparing and filing Madrid Protocol applications * Preparing and filing other routine trademark documents, including statements of use and extensions of time to file statements of use, and post-registration maintenance filings and renewals * Preparing and recording trademark and copyright assignment documents * Corresponding with foreign trademark agents regarding foreign trademark prosecution matters and contentious proceedings * Communicating with clients regarding requirements for submitting trademark applications, non-substantive Office Actions, and reporting changes to the status of trademark applications * Preparing trademark status reports and trademark schedules upon request from client or attorney * Communicating with the PTO * Instructing docketing team on updates to trademark database, and review and update docket calendar reports * Participating in regularly scheduled paralegal and practice group meetings * Assisting with filings in contentious matters before the Trademark Trial and Appeal Board * Recording trademark and copyright registrations with U.S. Customs * Assisting with preparation of copyright applications * At least 2 years of trademark prosecution experience
 
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