Location: NY, CHI, or DC
Position: Trademark Paralegal
Compensation: $80,000 - $135,000 DOE
Job Summary
The Trademark Paralegal is assigned to specific matters, clients, projects and/or specified routine activities and determines and prepares appropriate work product, sometimes with minimal attorney supervision. The Trademark Paralegal has a minimum billable requirement of 1550 hours per year.
Job Responsibilities
- Conducts preliminary US searches and worldwide searches for trademark availability
- Reviews and distributes, as needed, trademark watch notices for all clients to attorneys for further review and follow up
- Conducts trademark use investigations and other due-diligence related activities
- Assists in infringement, opposition, and related proceedings, including discovery-related activities, cite checking and filing
- Prepares draft reporting letters and responses to Office Actions for attorney review
- Reviews specimens and prepares draft declarations
- Coordinates take-down notices with numerous social media platforms
- Prepares formal assignments and agreements for trademark matters and records relevant materials with the United States Patent and Trademark Office
- Prepares trademark status summary reports
- Prepares worldwide cost estimates for filing and maintenance of trademarks
Knowledge, Skills and Abilities
- General knowledge of domestic and international trademark prosecution law
- Demonstrated ability to prepare a heavy volume of accurate and complete documents that meet US Trademark Office requirements
- Demonstrated ability to identify and meet deadlines based on trademark office correspondence, client instructions, and other documents, and manage associated risks by coordinating with attorneys to file in advance of due dates whenever possible.
- Demonstrated Intermediate PC knowledge, MS Word, PDF conversion tools, MS Outlook, and document management software
