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Title : Trademark Paralegal

Location : Texas - Houston
Refer to Job # BOMU799814

Trademark Paralegal The candidate will assist partners and associates in all aspects of domestic and foreign trademark transactions, including activities such as obtaining information from clients, background trademark searches, filing registration forms with the United States Patent and Trademark Office, responding to office actions from the United States Patent and Trademark Office, and communicating with trademark colleagues in other countries for clients, as well as other duties associated with providing paralegal support in our clients trademark matters. Performs domestic and foreign trademark searching and clearance using Corsearch or Thomson searching databases. Prepares and e-files US trademark applications and maintains documents. Drafts and e-files TTAB documents for oppositions and cancellations. Contacts clients to obtain required information and specimens for filing. Reviews docket and sends reminders to clients and attorneys. Manages foreign trademark prosecution and oppositions/cancellations. Communicates with trademark colleagues in other offices and relationship firms in other countries concerning client trademark matters. Drafts cease and desist letters. Performs trademark due diligence prior to mergers and acquisitions and preparation of exhibits. Supports client development activities. Supports International Trademark Association (INTA) activities. Performs other work-related duties as may be assigned from time to time. A Bachelor's degree is required. A Paralegal Certificate is preferred. Ten or more years of formal trademark paralegal experience is required. Experience working as a trademark paralegal in a large law firm or corporate law department is required. Experience in a multinational or global law firm a plus. Strong working knowledge of US and international trademark law and practice, including filings under the Madrid protocol, searching and clearing experience, and familiarity with CPI docketing database or other comparable trademark docketing database. Experience with copyrights and the International Trademark Association (INTA) a plus. Strong Microsoft Office capabilities required along with excellent writing and organizational skills.

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