Trademark Paralegal

WE DO NOT NEED AN ATTORNEY THIS POST IS FOR A TRADEMARK PARALEGAL ONLY

Primary responsibilities will be trademark paralegal duties to support a single Trademark Attorney based in New York along with supporting the other trademark paralegals on the team. This is a contract, fully remote position. Applicants must have the necessary computer, software, and office essentials to work in an effective manner. Number of hours per week, are dependent on the candidate’s experience, areas of expertise, availability, and the scope of responsibilities assigned.

Essential Duties and Responsibilities:

Must have significant experience drafting applications including identifications of goods and services. Prepare, file and prosecute U.S. trademark applications including responding to office actions, filing statements of use, extensions of time to oppose, oppositions, assignments, renewals and proof of use affidavits and related documents with the USPTO;

Review and understand trademarks search reports and respond to client inquiries as necessary;

Liaise with clients as the first line of communication for trademark filings, prosecution, renewals and conflicts (oppositions, cancellations, infringements) and coordinate management of same with Attorney;

Coordinate non-US trademark searches and filings with outside Foreign Associates;

Manage and maintain trademark docket for U.S. and non-US trademark matters (Dockettrak);

Investigate trademark infringement matters including drafting of cease and desist letters or takedown filings as necessary and/or coordinating with non-U.S. counsel for same.

Requirements:

2-5 years of U.S. trademark experience at a law firm or as part of a corporate legal department

Current USPTO trademark knowledge a must

Experience with Dockettrak software or an equivalent IP docketing program

Ability to multi-task and prioritize work in a fast-paced environment

Ability to work independently and complete projects in a timely manner

Ownership and ability to “run point” on projects assigned

Good attention to detail and precise written work product

Proficiency with Microsoft Office Suite

Proficiency with USPTO filing requirements and form knowledge

Possess strong interpersonal skills, professionalism and presentation skills and ability to communicate effectively with clients

Self-starter attitude, combined with the ability to exercise independent judgment and critical thinking

Trademark searching experience a plus (Corsearch)

Copyright filing and knowledge a plus