In-house Trademark Paralegal

Overview:

New York headquarters of a brand management company that specializes in acquiring global consumer brands and strategically repositioning them is currently seeking a Trademark Paralegal for its growing in-house legal department. This is a full-time, non-remote, position with excellent benefits.

Requirements:

• Must be willing to work from office 5 days per week (non-remote position) beginning July 2022
• Thorough knowledge of trademark docketing procedures on CPI or similar trademark software platform
• Minimum two (2) years of work experience in a law firm environment, or related professional experience
• Thorough knowledge of U.S. trademark prosecution procedures and PTO rules and forms
• Thorough experience managing foreign trademark counsel
• Experience managing opposition and cancellation proceedings
• Familiarity with Microsoft Word and Excel
• Ability to organize and prioritize numerous tasks and complete them under time constraints
• Ability to proofread material for contextual, grammatical, typographical, or spelling errors
• Must be or willing to be a notary in the state of NY

Responsibilities:

• Docketing trademark matters on CPI trademark database
• Assist attorneys in prosecution and maintenance of U.S. trademark holdings
• Coordinating international trademark matters through foreign counsel
• Powers of Attorney and Legalization procedures
• Managing opposition and cancellation proceedings
• Gathering evidence and related materials
• Preparing computer reports re worldwide status of marks.
• Preparation and recording of name changes and assignments
• Running trademark searches
• Reviewing watch notices
• Preparing computerized docket/status reports
• Review and approval of invoices
• Assist with due diligence for new acquisitions
• Assistance reviewing licensing agreements and other contracts