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    Trademark Paralegal - New York, United States - Lexitas Legal Talent Outsourcing

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    Legal
    Description

    Our client, a prestigious, national law firm, seeks a Trademark Paralegal to be based in their Chicago, St. Louis, Washington, D.C. or New York office. This is a hybrid position.

    This position will support the local IP&T Practitioners and the national IP&T Practice Group. This position will report to the Practice Group Leader, with daily work performed primarily under the direction of assigned practice group lawyers and/or paraprofessionals.

    Responsibilities:

    • Prepare and file U.S. trademark prosecution and maintenance documents electronically with the USPTO including but not limited to: applications, office action responses, extensions of time, statements of use, affidavits, renewals, assignments and powers of attorneys
    • Conduct trademark screening searches using third search party platforms and common law searches
    • Correspond with clients regarding routine phases of trademark prosecution and maintenance matters
    • Assist attorneys in TTAB filings, i.e. extensions of time to file a notice of opposition, consent motions
    • Prepare and file trademark documents with WIPO including but not limited to applications for International Registration, responses to Notices of Irregularity, renewals, assignments and powers of attorney
    • Work with and correspond with foreign counsel in connection with prosecution and maintenance of trademark applications/ registrations outside of the United States, including attending to notarization and legalization of documents
    • Prepare and record ownership and change of name documents related to trademarks
    • Conduct due diligence on trademark portfolios
    • Prepare and file customs registrations and renewals with the U.S. Customs and Border Patrol
    • Prepare cost estimates for new filings
    • Prepare and file copyright applications for registration
    • Assist with trademark enforcement matters including working with and corresponding foreign counsel regarding potential oppositions, cancellations and cease & desist letters
    • Assist with monitoring attorney dockets and working with internal personnel to manage deadlines
    • Record billable hours timely and accurately utilizing practice/firm billing protocols

    Requirements:

    • Bachelor's Degree is required
    • 4 to 10 years working in a trademark department with at least 4 years of trademark prosecution related duties; experience with copyrights would be a plus
    • Passionate about learning new skills and intellectual property
    • Exceptional writing, editing, research, organizational, and analytical skills and attention to detail
    • Expert in Microsoft Excel, PowerPoint, and Word
    • Ability to work well under pressure and handle multiple, simultaneous tasks efficiently
    • Strong work ethic, including willingness to work evenings and weekends as needed
    • Professional demeanor, attention to detail, and great organizational skills are essential
    • Ability to provide direction and training to junior team members
    • Ability to maintain discretion and privacy with confidential matters and documents
    • Ability to meet minimum billable hourly requirement
    • Proficiency in Microsoft Office Suite, PDF creation tool(s), document management software, Elite or other timekeeping software, Internet required
    • Excellent client service, ability to work overtime and travel as needed

    Compensation:

    Competitive salary ($85k-$120k) and benefits package including medical, dental, vision, 401k, profit sharing, short-term/long-term disability, life insurance, tuition reimbursement, paid time off, paid holidays and discretionary bonuses.


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