General Summary: Support trademark attorneys in the timely preparation, prosecution and enforcement of U.S. and foreign trademark and copyright cases on behalf of Firm clients. Manage a docket and communicate professionally with attorneys, foreign associates and clients. Work cohesively with team members and attorneys to provide efficient support of administrative tasks and superior client service.

Responsibilities:

• Assist attorneys in the prosecution of U.S. and foreign trademark and copyright cases, as well as Trademark Trial and Appeal Board (TTAB) cases, along with foreign oppositions and cancellations.
• Research third party use of marks, as well as trademark assignments and name/address change records in foreign countries.
• Prepare and file U.S. trademark and copyright applications with the USPTO.
• Prepare and assist with filing extensions of time, statements of use, combined affidavits, assignments, renewal applications, and responses to office actions with the USPTO.
• Prepare initial search opinion letters, cease and desist letters, foreign filing instruction letters, as well as foreign associate letters instructing the filing of opposition or cancellation proceedings.
• Prepare cost estimates for trademark prosecution and maintenance, including filings in foreign countries.
• Conduct, order and analyze trademark watching service reports; forward reports and results to assigned clients.
• Prepare and file all documents in connection with oppositions and cancellation actions or proceedings.
• Assist with the preparation of documents to be produced with the preparation of answers to discovery requests.
• Prepare registered user agreements, assignments and license agreements.
• Prepare various charts and status reports of domestic and foreign trademark and copyright protection.
• Provide coverage for the Trademark Department as requested. Conduct and participate in training as necessary.
• Other tasks as assigned by supervisors.

Qualifications:

• Bachelor's degree along with either a Paralegal Certificate or a written declaration from a supervising trademark attorney stating that the candidate is qualified to perform paralegal tasks.
• Minimum of one to three years of trademark paralegal experience.
• Courses in business and communication are helpful.
• Excellent computer skills; proficient in Microsoft Office Suite.
• Experience working with iManage or similar document management system and research tools such as Saegis.
• Effective writing skills; excellent proofreading, spelling, grammar and punctuation.
• Able to work with minimal supervision exercising good judgment and decision making.
• Effective verbal communication skills.
• Able to analyze, organize and prioritize case information.
• Able to meet the Firm’s billable hour requirement or value added equivalent.
• Must be efficient, accurate, flexible, timely and have excellent attention to detail.
• Able to thrive in a fast-paced, dynamic environment.
• Team player and a positive attitude is a must.
• Able to lift and carry up to 15 pounds.    
• Must meet minimum testing requirements.