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Title : Trademark Paralegal

Location : Missouri - St louis
Refer to Job # JRPH792443

Trademark Paralegal The candidate will work under the direction of a supervising attorney, will assist in the administration of trademarks, and provide limited backup coverage for the administration of patent registrations subject to experience, if available. Primary responsibilities will be to assist the Trademark team by conducting and analyzing trademark clearance searches; retrieving, analyzing and reporting the status of registrations, both foreign and domestic; and performing other tasks as necessary relating to prosecution of global trademark portfolios for clients. This includes handling certain aspects of U.S. and foreign trademark prosecution and maintenance, and corresponding with foreign associates. Responsibilities also include performing searches relating to due diligence projects. The paralegal will interact regularly with Firm attorneys and other members of the IP Group, as well as clients, counsel and outside vendor personnel. (a) Bachelor's degree or (b) Associate's degree and minimum of 1 year law firm experience in a Paralegal capacity, or 2 to 5 years of complex law-related experience under the supervision of an Attorney or Senior Paralegal; AND, in addition to (b), completion of an educational program for Paralegals approved by the American Bar Association ("ABA") or offered by an accredited institution which follows ABA guidelines for Paralegal programs. Docketing management system experience such as CPI, CPA or PATTSY. Law Firm experience preferred. Trademark prosecution experience preferred; patent prosecution experience a plus. Prepare trademark assignments, record ownership transfers with USPTO, and coordinate ownership transfer recordation for foreign registrations/applications. Prepare Madrid Protocol applications and prepare and submit all filings related to International Registrations including subsequent designations, maintenance, and ownership updates. Conduct preliminary trademark clearance searches and report results to the attorney. Prepare and submit filings with the USPTO for new applications, renewals, Statements of Use, responses to office actions, assignments, various petition forms, and all TTAB proceeding filing. Prepare and file state applications and renewals. Continuously monitor all deadlines and prepare and send notices to clients regarding upcoming deadlines and requirements. Correspond with foreign associates regarding new filings, prosecution and related deadlines, and billings. Prepare formal papers, correspond with clients to obtain signatures and coordinate all levels of legalization for foreign matters when required. Coordinate file intake and matter entry in tracking system for new clients. Review trademark watch notices and prepare draft cease and desist letters. Anticipate attorney and client needs for specific projects. Delegate effectively and as appropriate with other Paralegals or Legal Administrative Assistants. Design, recommend, and implement new processes and procedures to increase group efficiency. Special projects, as needed. Act as a liaison among various internal departments as well as with outside agencies.

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