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Title : Paralegal - Trademark
Location : District of Columbia - WashingtonRefer to Job # YRLG713168
Paralegal Trademark The candidate should have a full understanding of the trademark prosecution process and be competent in docketing of all related actions as well as have experience clearing trademarks, taglines, graphics and verbiage. The successful candidate will also provide support for Trademark Trial and Appeal Board proceedings and trademark litigation. Trademark prosecution responsibilities will include the preparation of USPTO filings including Applications, Office Action Responses, Amendments to Allege Use, Declarations of Use and Incontestability, and Applications for Renewal. Trademark enforcement responsibilities will include assisting attorneys with domestic and international trademark opposition and cancellation proceedings, including preparation of pleadings, document productions, filing documents with the Trademark Trial and Appeal Board, conducting Internet research, and assisting with policing and enforcement, such as cease and desist letters, etc.). The Trademark Paralegal will provide support for trademark litigation; communicate with clients regarding US and foreign trademark maintenance requirements; conduct domestic and international online trademark searches for use and registration; analyze search results and identify issues for attorneys; assist with trademark due diligence, examine investigative summaries and prepare reports and recommendations; instruct and liaise with international associates to oversee filing and prosecution of international applications; and oversee execution and legalization of documents. The candidate should have BA/BS degree and strong academic record; Paralegal certificate preferred. Must have 2 years of experience as a Trademark Paralegal in a law firm or corporation. Must be able to communicate with clients and local counsel regarding issues that may arise during prosecution, such as evidence of use requirements, reclassifications, etc. Should have ability to research, analyze and synthesize large amounts of data. Must have excellent attention to detail skills, including ability to assess and respond to underlying detail issues and implications. Must be fluent with SAEGIS, PTO TEAS System, Microsoft Word, Excel and Outlook.
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