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Location : California - Redwood city
Refer to Job # ZFPE816055
Trademark Paralegal The candidate will be a member of the IP Practice Group and be assigned to specific matters, clients, projects, and/or attorneys. Will assist the IP Practice Group to function in a consistent productive manner; is responsive and ensures that all documents received from clients, foreign associates, USPPTO, and other government agencies have been responded to timely, accurately, and all other day-to-day responsibilities are being met under established policies and procedures; while exercising discretion and confidentiality in maintaining contact with clients, attorneys, and staff. Ensure policies and procedures are being followed on a day to day basis in relation to assigned duties, including client special instructions and in accordance with established firm guidelines. Monitor deadlines associated with the US and international dockets, including providing follow-up with attorneys, clients, and management in order to provide adequate time to respond. Review daily docket reports in accordance with established firm guidelines and correspond with the IP docket department regarding same. Prepare and file trademark applications, statements of use, extensions of time, amendments to allege use, Section 8 & 15 declarations, and other filings with the USPTO under attorney supervision. Prepare and manage the recordation of assignments and name changes in the US and internationally. Receive and act upon client instructions, including confirmation and/or draft response to client inquiries related to US, WIPO, and foreign applications. Create and maintain electronic worksheets to assist attorneys in managing client requirements as needed. Provide support for Trademark Trial and Appeal Board proceedings and appeals. Review and analyze trademark watch notices. Conduct routine trademark clearance searches. Review advertising and marketing materials for proper trademark usage and accuracy of marketing claims and sufficiency of corresponding substantiation. Maintain the firm's official file utilizing the document management system. Track and record client-billable time as required meeting minimum billable hour requirements. Maintain and prioritize work on a daily basis and communicate if unable to meet daily responsibilities. Utilize USPTO and other related government agency electronic resources effectively. Willingness and flexibility to work closely with all attorneys and staff as needed. Provide back-up support to other team members as needed. Bachelor's degree or equivalent specialized training (i.e., paralegal studies or certificate from an ABA recognized program) is preferred. Must have 4+ years of progressive trademark prosecution experience, including docket management, application filings and prosecution in order to gain an understanding to provide support and planning that will ensure a high quality and accurate work product. Proficiency with US and international trademark law, including inter-partes matters is required. Proficiency in conducting trademark clearance searches and managing trademark watch notices is essential. The ability to compose, proofread and edit (e.g., punctuation, grammar, spelling) routine memorandums and correspondence is a must. Should be proficient in MS Office products (Excel, Outlook, PowerPoint, and Word).
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