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Title : Trademark Paralegal

Location : California - Menlo Park
Refer to Job # KQBO753518

Trademark Paralegal (SFO/SVA) The candidate will be part of a team of attorneys, paralegals and support staff providing a high level of service to both internal and external clients. Play an integral role in serving the needs of clients. Under the supervision of attorneys the Trademark paralegal, provide support for all types of U.S. and international trademark activities. Operate as part of a team of attorneys and support staff to provide 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. The candidate should have a bachelor's degree; paralegal certification is preferred. 3 years of Trademark work experience is needed. Must have experience in professional environment preferred which includes progressive responsibility in managing trademark and litigation matters. Experience with Intellectual Property docketing systems is important. Law firm experience is strongly 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. Knowledge of filing requirements for convention (foreign) applications is crucial. Should be proficient with electronic research tools such as Saegis, USPTO and WIPO databases; and conduct preliminary trademark searches. Must be proficient with USPTO electronic trademark filing systems. High level of proficiency with technology including Microsoft Office Suite applications, Adobe Acrobat, Lexis/Nexis, Westlaw and other internet research tools is an asset. Strong organizational and time and deadline management skills are a plus.

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