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Location : District of Columbia - Washington
Refer to Job # WIBQ829450
Trademark Paralegal Duties: The candidate will 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 the 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.
Qualifications: The candidate should preferably have a Bachelor's or better. Experience with Intellectual Property docketing systems is required. Also, 3+ years of experience preferred. Law firm experience is strongly preferred. 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. Proficient with electronic research tools such as Saegis, USPTO and WIPO databases; and conduct preliminary trademark searches. Proficient with USPTO electronic trademark filing systems. Knowledge of filing requirements for convention (foreign) applications. High level of proficiency with technology including Microsoft Office Suite applications, Adobe Acrobat, Lexis/Nexis, Westlaw and other internet research tools. Strong organizational and time and deadline management skills. Ability to work confidently and efficiently under pressure and tight deadlines. Respectful to other individuals working directly or indirectly with them. Reliable and dependable team player who is able to adapt quickly to new surroundings. Must be a good planner who is very detail-oriented and has the ability to organize and prioritize. Should be action and results-oriented; able to multi-task daily responsibilities. Maintain confidentiality of client information. Must have effective daily written and oral communication skills with clients and team members. Work independently, taking the initiative to move projects to a conclusion. Ability to manage large client portfolios with numerous deadlines.
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