Trademark Paralegal in Long Island, NY| LawFirmStaff

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Title : Trademark Paralegal

Location : New York - Long Island
Refer to Job # BRNR731686


Trademark Paralegal The candidate will work for the Intellectual Property Department. Will be part of firm s team of attorneys, paralegals and support staff providing a high level of service to both internal and external clients. Manage trademark docket for deadlines; understand docket and deadlines and action needed on each file. Conduct electronic recordation of assignment documents; review Notice of Recordation and report same to client and prepare client status reports; work with and manage large global trademark portfolios. Comprehend chain of title in U.S. trademarks and ability to prefect same. Assist with trademark clearance projects, including U.S. screening and full searches and international screening and formal counsel searches. Prepare and file U.S. trademark applications, including electronic filings with follow through to registration and post-registration maintenance and renewals. Coordinate with foreign counsel on international clearance, filing, maintenance and renewal matters: oversee processing of foreign associates' invoices for payment, and prepare reporting letters to client. Effect portfolio transfers and manage multi-client portfolios. Prepare and file powers of attorney and letters of instruction. Assist in trademark filing strategy discussions and due diligence. Assist with preparation and filing of responses of Office Actions. 3+ years of experience preferred. Should have extensive knowledge of U.S. trademark rules and procedure; working knowledge of national laws of other countries; knowledge of Paris Convention and deadlines set therein and familiarity with the Madrid Protocol. Should be proficient with electronic research tools such as Saegis, USPTO and WIPO databases; and conduct preliminary trademark searches and proficient with USPTO electronic trademark filing systems. Experience with Intellectual Property docketing systems required. Knowledge of filing requirements for convention (foreign) applications required. High level of proficiency with technology including Microsoft Office Suite applications, Adobe Acrobat, Lexis/Nexis, Westlaw and other internet research tools required. Law firm experience strongly preferred. Strong organizational and time and deadline management skills.
 
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