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Location : Minnesota - Minneapolis
Refer to Job # GBGT826161
Trademark Paralegal Duties: Administer, maintain, and oversee entries into the trademark database containing Firm client registrations and deadlines. Collaborate with the attorneys in maintaining Firm client trademark registrations by communicating with the attorney or client on various trademark matters including: trademark application filings, maintenance filings, renewal instructions, Statement of Use and extension of time filings, Declarations of Use, Sections 8, 9 and 15 renewal filings, drafting specification of goods and services and related amendments, reviewing and obtaining trademark specimens, and responses to office actions. Prepare trademark assignments, record ownership transfers with USPTO, and coordinate ownership transfer recordation for foreign registrations/applications. Prepare Madrid Protocol applications and prepare and submit all filings related to International Registrations including subsequent designations, maintenance, and ownership updates. Conduct preliminary trademark clearance searches and report results to the attorney. Prepare and submit filings with the USPTO for new applications, renewals, Statements of Use, responses to office actions, assignments, various petition forms, and all TTAB proceeding filing. Prepare and file state applications and renewals. Continuously monitor all deadlines and prepare and send notices to clients regarding upcoming deadlines and requirements. Correspond with foreign associates regarding new filings, prosecution and related deadlines, and billings. Prepare formal papers, correspond with clients to obtain signatures and coordinate all levels of legalization for foreign matters when required. Coordinate file intake and matter entry in the tracking system for new clients. Review trademark watch notices and prepares draft to cease and desist letters. Anticipate attorney and client needs for specific projects. Delegate effectively and as appropriate with other Paralegals or Legal Administrative Assistants. Design, recommend and implement new processes and procedures to increase group efficiency. Perform special projects, as needed. Act as a liaison among various internal departments as well as with outside agencies. Meet billable hour requirement of 1550 per year. Time entry, scanning, e-mailing, etc. Assist in Firm marketing for the practice area. Performs other duties as assigned.
Required Qualifications: A Bachelor's Degree; Or an Associate's Degree and 1+ years of law firm experience in a Paralegal capacity. Or, 2-5 years of complex law-related experience under the supervision of an Attorney or Senior Paralegal; And completion of an educational program for Paralegals approved by the American Bar Association (ABA) or offered by an accredited institution that follows ABA guidelines for Paralegal programs. Docketing management system experience such as CPI, CPA, or PATTSY. Strong verbal and written communication skills. Self-motivated with excellent attention to detail, organizational skills, and the ability to effectively prioritize. Highly professional with a strong customer service orientation, commitment to meeting deadlines, and ability to multitask in a fast-paced and dynamic environment. Strong professional, independent thinking skills with strength in problem-solving and the ability to offer constructive opinions and creative solutions. Team player who motivates and educates other team members. Preferred Qualifications: Law Firm experience. Trademark prosecution experience. Patent prosecution experience.
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