Trademark Paralegal (Prosecution)

Roseland, NJ

Summary

Large, global, law firm is seeking a mid- to senior-level paralegal with at least 5 years of experience in all phases of domestic and international Trademark Prosecution in a law firm environment (corporate in-house experience a plus) to join their collaborative and growing team.

What You Will Do

The Trademark Paralegal is responsible for supporting US and international trademark functions, including all aspects of trademark searching, clearance, prosecution, maintenance, and enforcement.

Essential Job Requirements

• Conduct preliminary trademark clearance searches; conduct preliminary investigations of potentially conflicting marks; review comprehensive US trademark search reports and prepare first draft of analysis in form of email summaries and opinion letters
• Experience with all USPTO search and electronic filing systems
• Coordinate with foreign counsel to conduct trademark clearance searches, review results and prepare first draft reporting summaries to client
• Draft and file US trademark applications, including research and review of client materials, and prepare descriptions of goods and services for applications
• Communicate with foreign counsel to file and maintain trademark applications, renew registrations, and respond to office actions
• Coordinate with clients’ marketing teams to obtain evidence of use and other supporting information for US and global applications and renewals
• Assist with gathering documents and evidence in support of contested matters (cease and desists, oppositions, cancellations and other enforcement actions) and correspond with foreign agents
• Prepare draft responses to Office Actions for the USPTO and coordinate with foreign counsel to respond to refusals
• Review watch service reports and conduct preliminary research of potentially infringing marks
• Assist attorneys with TTAB filings
• Proficient with computerized trademark search databases, particularly Corsearch and Saegis platforms
• Assist with M&A and other transactional diligence review of US and foreign trademark portfolios
• Prepare draft form trademark assignments and conduct review of USPTO assignment abstracts to examine chain of title and lien status
• Experience with brand enforcement, counterfeit issues and customs registrations and takedowns a plus
• Prepare copyright applications, review copyright security interest agreements and conduct copyright searches and diligence
• Knowledge of pertinent USPTO trademark systems, including Trademark Electronic Search System (TESS), Trademark Electronic Application System (TEAS), Trademark Electronic Application System International (TEASi), Trademark Status and Document Retrieval system (TSDR), and Trademark Trial and Appeal Board (TTAB) preferred 

Skills, Knowledge, and Abilities

• Bachelor’s degree and/or Paralegal Certificate
• 5 + years of Paralegal experience in a law firm environment
• Provide excellent client service by maintaining a positive and professional attitude and cooperative relationship with firm colleagues, as well as when interacting with external clients and contacts.
• Knowledge of pertinent USPTO trademark systems, including Trademark Electronic Search System (TESS), Trademark Electronic Application System (TEAS), Trademark Electronic Application System International (TEASi), Trademark Status and Document Retrieval system (TSDR), and Trademark Trial and Appeal Board (TTAB)
• Knowledge of WIPO International forms and search databases
• Knowledge of Outlook, Microsoft Word, Office, Excel, PowerPoint, Corsearch, Saegis and CPi docket software.
• Ability to produce work product with a high level of attention to detail.
• Able to work remotely, when requested, and ensure that tasks are completed timely and efficiently; maintain regular communication with attorneys and colleagues while working remotely.  Able to follow firm policies and procedures while working remotely.
• Ability to prioritize work for an active docket of matters and adjust priorities, as needed.
• Ability to exhibit flexibility and work in a fast paced environment
• Ability to coordinate multiple projects simultaneously