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Location : New York - Long Island
Refer to Job # SVWU829429
Trademark Paralegal Duties: Prepare and file trademark applications with the USPTO and WIPO, with follow through to registration and post-registration maintenance and renewals. Assist attorneys in preparing cost estimates for trademark clearance, prosecution, and maintenance. Order and analyze trademark searches and assist attorneys in compiling results from such searches to provide clearance analysis. Coordinate with foreign counsel on international trademark clearance, filing, maintenance and renewal matters. Prepare reporting letters to clients. Prepare instruction letters to foreign counsel regarding foreign filings. Prepare and file Powers of Attorney, Declarations of Use and Statements of Use/Extensions of Time. Participate in trademark filing strategy discussions and due diligence. Assist with preparation and filing of responses to Office Actions. Prepare and file trademark assignments/transfer of ownership documents with USPTO. Review executed formal documents to ensure they are properly executed, notarized, stamped, witnessed, etc. Arrange for legalization (by consulate or by Apostille) of assignments for recording in foreign trademark and patent offices. Order file wrappers, copies of recorded assignments and security interests, and title documents recorded at government offices. Monitor and maintain trademark prosecution docket in DocketTrak for due dates, i.e., responses, maintenance filings, renewals, oppositions, cancellations, etc. Communicate with support staff and the attorneys for docketing. Assist with the trademark docketing as needed. Work with clients and attorneys to manage global trademark portfolios and matters. Communicate and coordinate with foreign trademark counsel and agents regarding trademark applications, registration and maintenance matters for global trademark strategy. Effect incoming and outgoing trademark portfolio transfers.
Qualifications: Extensive knowledge of U.S. trademark rules and procedures. Proficient with USPTO electronic trademark filing systems. Working knowledge of national trademark laws of other countries; knowledge of Paris Convention and deadlines set therein and familiarity with the Madrid Protocol. Proficient with electronic research tools such as TrademarkNow and Corsearch, as well as USPTO, WIPO and foreign trademark national databases. Experience in conducting preliminary trademark searches. Extensive experience with Intellectual Property docketing systems, such as DocketTrak and CPI. Knowledge of filing requirements for convention (foreign) applications. High level of proficiency with document management and word processing software including Microsoft Office Suite applications, iManage and Adobe Acrobat. Strong organizational and time-management skills. Excellent oral and written communication skills. Overtime as required. Ability to work efficiently under pressure and tight deadlines. Respectful to other individuals working directly or indirectly with them. Reliable and dependable team player who can adapt quickly to new situations. Very detail-oriented with the ability to plan, organize, and prioritize. Willingness and ability to multi-task daily responsibilities is essential. Maintain confidentiality of client information. Work independently, taking initiative to move projects to conclusion. Ability to manage many large trademark portfolios with numerous deadlines. Bachelor's degree required. Must have 3 years or more trademark paralegal experience in a law firm or corporate setting is the minimum work-related experience required for this position.
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