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Title : Trademark Prosecution Paralegal Ii

Location : New York - Long Island
Refer to Job # YAUY823026

Be a part of a highly successful, full-service law firm that counts among its esteemed clients many Fortune 250 firms. This firm has a reputation for treating associates exceedingly well. The branch office of a large international law firm, this firm's practice has consistently been strong in the litigation, corporate and tax fields; however, the firm also has made a definite commitment to intellectual property related work in the Los Angeles legal market. The Los Angeles branch has a full book of business involving some of the biggest movers and shakers on the national and international scene. An aggressive development track has associates achieving partner status in a very limited amount of time compared to other national firms of its stature. This firms is generally seeking the best and the brightest--meaning it is most willing to consider associates from top schools and firms.
Trademark Prosecution Paralegal II Duties: Order and analyze trademark searches and assist attorneys in compiling results from such searches to provide clearance analysis. Handle all types of filings at the USPTO and Trademark Trial and Appeal Board in order to prosecution, maintain, and enforce trademarks. Assist attorneys in preparing cost estimates for trademark clearance, prosecution, and maintenance. Analyze chain of title information for trademarks and prepare appropriate assignments and maintenance documents. Order file wrappers, copies of recorded assignments and security interests, and title documents recorded at government offices. Draft IP assignments and IP security agreements and releases. Review executed IP assignments to ensure they are properly executed, notarized, stamped, witnessed, etc.. Prepare recordation cover sheets or electronic filings for documents to be recorded at USPTO or Copyright Office. Arrange for legalization (by consulate or by Apostille) of assignments for recording in foreign trademark and patent offices. Monitor and maintain trademark prosecution docket for due dates for responses, maintenance filings, renewals, oppositions, and cancellations. Draft trademark/service mark applications, affidavits of use, maintenance and renewal filings, and assignment agreements. Draft responses to trademark examining attorney's official action. Communicate with and manage foreign trademark counsel and agents regarding registration and maintenance matters. Manage and train more junior paralegals. Qualifications: A Paralegal professional with 5+ years of experience in Trademark Prosecution work, including knowledge of USPTO and TTAB rules and procedure, familiarity with international trademark filing procedures, conducting due diligence reviews of intellectual property, drafting correspondence and diligence memoranda, and preparing of worldwide assignments and recordings. Additional qualifications include excellent research and communication skills, and strong analytical and organizational skills. A Bachelor's degree preferred. Microsoft Outlook, Word, PowerPoint, Excel, SAEGIS and other search platforms (e.g., Thomson Compumark), and trademark docketing software. Experience in Blue Book and Cite Checking is a plus.

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