Trademark Paralegal

Charlotte, NC or Atlanta, GA 

Summary

Premier, global, law firm’s Atlanta, GA or Charlotte, NC office is seeking an experienced Trademark Paralegal to work in their Intellectual Property-Trademarks & Copyrights practice group. Qualified candidates will have at least 3+ years’ experience as trademark professional. Experience with Patricia® database preferred but not required. Under general supervision and according to established policies and procedures, the Trademark Paralegal will perform a variety of duties to assist attorneys to whom they are assigned.  Maintains positive contact with clients and observes confidentiality of client matters.  Exercises discretion and independent judgment with respect to matters of significance.

Essential Duties

• Manage trademark clearance, registration, and maintenance/renewals for clients around the world. (Principal Task)
• Assist in diligence process for corporate matters, e.g. mergers and acquisitions.
• Prepare and file assignments of trademarks in the U.S. and coordinate the same for foreign jurisdictions.
• Convey and draft instructions to U.S. and foreign counsel related to trademark matters.
• Coordinate with different in-house departments and manage foreign counsel to assure deadlines are met.
• Support attorneys to prepare documents pertinent to oppositions, cancellations or litigations.
• Assist attorneys in managing trademark clearance research results.
• Develop and execute trademark portfolio reports using commercial software.
• Create cost estimates for registrations, renewals, assignments, etc. using commercial software and coordination with foreign attorneys.
• Upgrade on procedures and modifications in applicable laws plus regulations in International trademark offices as well as USPTO.
• Develop and file U.S. customs recording.
• Support trademark-related projects along with anti-counterfeiting efforts.
• Assist with filings of copyright registrations and recordals.
• Follows the ethical requirements as set forth by the Rules of Professional Conduct of the state.
• Maintains docketing of all maintenance deadlines.
• Prepares documents for filing with the Patent and Trademark Office.
• Reviews and analyzes matters for the purpose of preparing evaluations and status reports for internal use and for clients.
• Conducts research related to the matter using all available resources including libraries and computer data systems.
• Proofreads and revises legal documents.
• Maintains current and accurate daily time records.
• Promotes positive working relationships between lawyers, secretaries, paralegals, and other support staff.
• Perform special projects as assigned.

Skills Needed to be Successful

• Knowledge of legal principles and practices at a level normally acquired through formal paralegal training or its equivalent. At least 3 years of trademark paralegal experience preferred.
• Ability to organize and prioritize numerous tasks and complete them under time constraints.
• Work often requires a high level of mental effort and strain while organizing and maintaining multiple cases.
• Ability to concentrate and pay close attention to detail when evaluating legal matters.
• Ability to proofread typed material for contextual, grammatical, typographical or spelling errors.
• Interpersonal skills necessary to communicate and follow the instruction effectively from a diverse group of clients, attorneys and staff and provide information with courtesy and tact.
• Ability to make sound decisions in the absence of clear instructions.
• Work occasionally requires more than 40 hours per week to perform the essential duties of the position; may require irregular hours.