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Title : Trademark Paralegal

Location : Wisconsin - Milwaukee
Refer to Job # NGZW722665

Trademark Paralegal Duties: Prepare U.S. applications; verify current ownership, class (es) and goods/services; prepare specimen; report new application filing to client. Prepare instruction letters to foreign associates for foreign applications. Review all mail reported to client for U.S. and foreign TM/SM (i.e., publications, acceptances, instruction request letters for Statements of Use/Ext. and renewals, allowance, registrations, declarations, confirmation of lapsing/abandonment to client and foreign associate, etc.). Prepare Office Action for online response. Prepare specimens for filing; verify current ownership, class (es) and goods/services; prepare 8 & 15 Affidavits, renewals and Statements of Use for filing with USPTO. Prepare all powers of attorney, assignments, legalized docs; prepare all correspondence back and forth between client and foreign associate regarding these formality docs. Prepare status letters to foreign associates regarding yearly status or formalities. Check TARR status on U.S. pending applications, oppositions and appeals. Prepare status reports for applicable clients for attorneys (patents and/or trademarks). Maintain and oversee Milwaukee office trademark docket. Ensure all deadlines are completed in a timely manner. Follow up on all trademark matters that are in the other offices for Milwaukee office attorneys. Responsible for all state and U.S. filings and prosecution of trademark applications. Responsible for maintaining of opposition proceedings in the office. Prepare and file U.S. District Court filings at the direction of the working attorney and maintain prosecution binders for same. Qualifications: A bachelors degree is required. Experience in all phases of U.S. and foreign trademark prosecution including a thorough knowledge of the U.S. PTO procedure requirements, time lines, rules and practice along with a general understanding of trademark docketing procedures is highly desirable. Excellent written, oral and e-mail communication skills. Ability to problem-solve and make practical decisions. Must be self-starter with the ability to work independently. Must take initiative and be comfortable working in a deadline driven environment. Ability to prioritize and handle/complete multiple tasks with competing deadlines. Outstanding customer service/interpersonal skills. Strong technology skills including proficiency in Microsoft Office. Exceptional organizational skills. Strong attention to detail with a commitment to accuracy. Solid proofreading skills. Excellent grammar, spelling, vocabulary and language skills. Efficient, flexible and patient. Ability to display complete discretion and tactfulness with confidential information.

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