Job Title:
Trademark Paralegal

Company: Lexitas Legal Talent Outsourcing

Location: new york city, NY

Created: 2024-05-16

Job Type: Full Time

Job 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 andor 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 attorneysConduct trademark screening searches using third search party platforms and common law searchesCorrespond with clients regarding routine phases of trademark prosecution and maintenance mattersAssist attorneys in TTAB filings, i.e. extensions of time to file a notice of opposition, consent motionsPrepare 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 attorneyWork 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 documentsPrepare and record ownership and change of name documents related to trademarksConduct due diligence on trademark portfoliosPrepare and file customs registrations and renewals with the U.S. Customs and Border PatrolPrepare cost estimates for new filingsPrepare 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 lettersAssist with monitoring attorney dockets and working with internal personnel to manage deadlinesRecord billable hours timely and accurately utilizing practicefirm billing protocols Requirements: Bachelor's Degree is required4 to 10 years working in a trademark department with at least 4 years of trademark prosecution related duties; experience with copyrights would be a plusPassionate about learning new skills and intellectual propertyExceptional writing, editing, research, organizational, and analytical skills and attention to detailExpert in Microsoft Excel, PowerPoint, and WordAbility to work well under pressure and handle multiple, simultaneous tasks efficientlyStrong work ethic, including willingness to work evenings and weekends as neededProfessional demeanor, attention to detail, and great organizational skills are essentialAbility to provide direction and training to junior team membersAbility to maintain discretion and privacy with confidential matters and documentsAbility to meet minimum billable hourly requirement Proficiency in Microsoft Office Suite, PDF creation tool(s), document management software, Elite or other timekeeping software, Internet requiredExcellent client service, ability to work overtime and travel as neededCompensation: Competitive salary ($85k-$120k) and benefits package including medical, dental, vision, 401k, profit sharing, short-termlong-term disability, life insurance, tuition reimbursement, paid time off, paid holidays and discretionary bonuses.