Our client, the New York City office of a very well-regarded national law firm is seeking a Senior Trademark Paralegal to join the firm's comprehensive trademark and copyright practice. This role requires 60% in office presence; remote work is permissible 40% of the time.
Responsibilities:
- Prepare, coordinate, and file trademark filings and other forms at the United States Patent & Trademark Office (USPTO), Trademark Trial and Appeals Board (TTAB), World Intellectual Property Organization (WIPO), and foreign trademark offices, working with local counsel as necessary.
- Instruct, mange, and work closely with local counsel in foreign countries.
- Handle all aspects of domestic and international trademark prosecution and portfolio management, including preparing various trademark filings and supporting documents, assisting with office action responses, updating trademark office records, tracking and managing docket deadlines, and routine client reporting.
- Communicate directly with clients and local counsel regarding filings, status updates and developments, deadlines, inquiries, and action items.
- Conduct and analyze trademark clearance searches.
- Create and maintain various charts and reports.
- Assist with trademark oppositions and cancellations, UDRP proceedings, DMCA takedown requests.
- Analyze watch notices, monitor third party filings, and investigate potential enforcement targets.
- Provide support on trademark/copyright/domain aspects of transactions, including conducting due diligence, preparing disclosure schedules, preparing assignments and licenses, recording chain of title updates.
- Prepare and file copyright applications at the U.S. Copyright Office.
- Ensure integrity of data in docket and files and maintain records in an organized manner.
- Assist with special projects and additional responsibilities as requested.
Required Qualifications:
- A bachelor s degree is required.
- A minimum of 10+ years of prior experience focusing on trademark prosecution and portfolio management at a law firm or a corporate in-house department (with at least 5+ years spent at a law firm); experience with trademark litigation or dispute proceedings a plus.
- Strong expertise in: U.S. trademark law, USPTO and TTAB rules, manuals, and procedures; proficiency in Madrid Protocol and foreign trademark laws and rules a plus.
- Comfortable using trademark websites and software technology including search platforms (e.g. Corsearch, Clarivate) and docket software (e.g. Foundation IP (preferred), Inprotech, WebTMs), as well as knowledge management systems and MS Office programs.
- Excellent written and verbal communication skills, attention to detail, timeliness, efficiency, responsiveness and workload management.
- Self-starter with the ability to work independently with minimal supervision in a fast paced and high-volume practice, prioritize competing demands, perform under pressure, and problem solve creatively.
- Demonstrated ability to professionally interact and collaborate with colleagues at all levels.
- Excellent computer skills, including proficiency in using Microsoft Word, Outlook, Excel and PowerPoint. Ability to quickly get up to speed and master new applications and software is critical.
- Flexibility to work overtime when necessary.