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Title : Paralegal--IP/Trademark

Location : New York - Long Island
Refer to Job # FJOI709534

Paralegal--IP/Trademark Duties: Provides legal assistance to attorneys in the practice of Trademark Intellectual Property law. Works under the supervision of the attorneys and uses judgment and initiative in arranging job details in order to achieve objectives. Reports directly to the attorneys in the Trademark Intellectual Property section, with overall performance oversight by the Chair of the Paralegal Committee. Assists IP attorneys in the preparation of trademark prosecution worldwide, copyrights, litigation, due diligence, and other legal work. Performs both legal and competitive intelligence research, able to access data from diverse sources. Conduct preliminary in-house searches using SAEGIS search database. Assess results with attorney and prepare draft e-mail to client outlining results of preliminary searches. Review full search reports for trademark clearance. Assess results with attorneys and prepare draft opinion letter to client outlining results of full search. Trademark Prosecution U.S. Prepare draft descriptions of goods/services for new applications to the specification of client s products/services. Obtain and review specimens of use. Prepare and file trademark applications with U.S. Trademark Office, WIPO (including subsequent designations). Prepare draft responses to office actions issued for informalities (e.g., goods/services amendments, disclaimers, suspension inquiries, etc.) and substantive objections (e.g., confusing similarity, descriptiveness, surname, etc.). Prepare and file i) extensions of time to submit Statements of Use, iii) Statements of Use, iii) Declarations of Continued Use and iv) Renewal Applications. Prepare Petitions to Director. Prepare and file appeals, requests for remand, etc. with Trademark Trial and Appeal Board ( TTAB ). Prepare and file extensions of time to oppose. Prepare draft notices of opposition and cancellation actions. File oppositions and cancellation actions with TTAB. Prepare motions for submission to TTAB (e.g., motion to extend trial deadlines, suspension of proceedings, etc.). Prepare draft trademark assignments. File trademark assignments for recordation. Record corporate name changes, security interests (and releases), etc. with U.S. Trademark Office. Trademark Prosecution Foreign Maintenance of large non-domestic trademark portfolios. Instruct foreign counsel to apply for and maintain international trademarks. Coordinate trademark assignments for multi-step transfers on global basis. Manage non-domestic opposition and cancellation actions including gathering supporting evidence, conducting research of infringing parties, etc. Effect legalization of Powers of Attorney, trademark assignments, affidavits, etc. for use outside of U.S. Copyrights File copyright applications, prepare of reconsideration responses for copyright objections. Prepare draft copyright assignments. File copyright assignments for recordation. Record corporate name changes, security interests (and releases), etc. with U.S. Copyright Office. Trademark Watch Review watch service reports for any potential conflicts. Report potential conflicts to client. Liaise with associate on opposition/cancellation matters including obtaining chances of successfully prevailing, conducting use investigation, etc. IP Acquisitions Assist in the acquisition of trademarks, copyrights and domain names. Domain Names Register domain names. Draft and file UDRP complaints. Customs Record trademark and copyright registrations with U.S. and foreign Customs Offices. Management Assist in daily management of Trademark Department including overseeing Docketing Department. Qualifications: Candidates must have a 4-year college degree with 5+ years experience in relevant legal work. Must demonstrate proficiency in computer applications such as Adobe Acrobat, Word 2010 and Excel 2010; must have excellent organization skills, and oral and written communication skills; as well as the capacity to be able to work under pressure to meet deadlines. Ability to produce high volume, high quality work. Attained knowledge and application of new procedures and technology; incorporates new procedures and technology changes for daily use and increased efficiency. Extent to which employee can be counted on to be on the job regularly and to attend to job responsibilities during work hours (Required). Effectiveness in learning and performing different types of work and the ease in making adjustments to new conditions. (Required). Extent to which employee cooperates and works well with the members of your group, section and Firm at all levels of personnel (Required). Projects a professional image both in conduct and appearance, such as demonstrating respect and proficiency, personal grooming and presentation (Required).

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