- Monitors and tracks status and filing deadlines for trademark portfolio containing more than 100 trademarks.
- Performs complex trademark screening and assists Attorneys in full trademark clearance, including corresponding with clients regarding search details
- Conducts trademark searches for prospective trademarks regarding availability of mark(s) for use and/or registration and report findings to in-house attorney and senior management
- Prepares and files trademark applications, extensions and Statements of Use.
- Performs complex queries in trademark database, generates reports from trademark database and performs analysis of same.
- Performs complex online investigations.
- Works with counsel on the preparation and/or filing of responses to USPTO Office Actions, cease & desist demands and co-existence agreements.
- Drafts and circulates legal document hold notices, tracks and follows up with recipients, work with Legal and other departments to coordinate the process as needed. Updates list of and tracks compliance requirements, legal document holds, and associated deadlines and matters.
- Assists counsel with managing IP assets and portfolio, including trademark prosecution (tracking registrations, renewals, office actions, and deadlines) and corresponding with outside counsel regarding international marks; and domain name registrations;. Requests information from business units and legal counsel as necessary.
- Prepares and reviews trademark reports for client
Experience and Education:
- 5+ years of experience as a trademark paralegal in a law firm or corporate setting
- Bachelor’s degree and/or Paralegal certificate
- Strong knowledge of US and foreign trademark law, policies, and processes
- Excellent written and oral communication skills
Other Skills & Other Requirements:
- Experience managing trademark portfolios, running trademark searches and making USPTO filings.
- Analytical skills to synthesize complex or diverse information and data.
- Ability to manage multiple projects at once
- Advises legal department managers of critical project developments in a timely manner
- Interpersonal Skills to resolve conflict; Maintains confidentiality.
- Teamwork - balances team and individual responsibilities; contributes to building a positive team spirit.
- Professionalism - Accepts responsibility for own actions; follows through on commitments.
- Attention to detail and thorough
- Highly organized and responsive
- Ability to work independently, but proactively seeks guidance when needed
- Ability to identify and resolve problems in a timely manner.
- Dependability - Follows instructions, responds to management direction; commits to hours of work when necessary to reach goals