Trademark Paralegal in Washington, DC| LawFirmStaff

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Title : Trademark Paralegal

Location : District of Columbia - Washington
Refer to Job # KTAX747075


Trademark Paralegal 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. Will manage trademark docket for deadlines and 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; and work with and manage large global trademark portfolios. Comprehend chain of title in US trademarks and ability to prefect same. Assist with trademark clearance projects, including US screening and full searches and international screening and formal counsel searches. Prepare and file US 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 preferably have 3+ years of experience. Must have extensive knowledge of US trademark rules and procedure; working knowledge of national laws of other countries; and knowledge of Paris Convention and deadlines set therein and familiarity with the Madrid Protocol. Should be proficient with electronic research tools such as Saegis, USPTO and WIPO databases; and conduct preliminary trademark searches. Proficiency with USPTO electronic trademark filing systems is required. Experience with Intellectual Property docketing systems is needed. Knowledge of filing requirements for convention (foreign) applications is essential. High level of proficiency with technology including MS Office Suite applications, Adobe Acrobat, Lexis/Nexis, Westlaw and other Internet research tools is a must. Law firm experience is strongly preferred.
 
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