Trademark Paralegal (7+ years)
Trademark Paralegal (7+ years)
Location(s): Atlanta, GA
Salary Range: $90,000 – $115,000
Schedule: 5 days/week onsite
Client Size: 4,000+
Client Description:
Our client is a global law firm that is consistently ranked among the top firms in the United States due to their innovative client strategies, focus on diversity and community impact. They offer a wide range of capabilities across practice areas and industries. They foster a supportive, stimulating environment that encourages collaboration, professionalism and trust.
Position Description:
The Trademark Paralegal position will provide organizational and practice specific assistance to attorneys in the Department in preparing cases from onset through post trial, including related research and analysis. Qualified candidates demonstrate professionalism, attention to detail, and ability to handle multiple priorities and work in an organized, efficient manner. Candidate should also be flexible to work overtime as needed.
Duties & Responsibilities:
- Manage a full docket of trademark-related deadlines, send timely reminders to clients and attorneys, and ensure that deadlines are handled
- Conduct in-house trademark screening searches on the TESS, SAEGIS, Corsearch, and WIPO Global Brand Database
- Prepare and file U.S. trademark applications, renewal applications, non-substantive office action responses, use declarations, extensions of time, and other USPTO filings
- Prepare and file international applications and extensions of international registrations with the World Intellectual Property Office (WIPO)
- File Uniform Domain Name Dispute Resolution Policy (UDRP) complaints with the Forum and WIPO
- Record documents such as assignments, name changes, and lien releases with the USPTO’s Assignment Recordation Branch
- File documents with the Trademark Trial and Appeal Board and prepare non-substantive procedural filings for filing with the Trademark Trial and Appeal Board
- Communicate professionally and accurately with clients to collect information and instructions related to trademark searches and filings
- Instruct and supervise trademark prosecution and trademark enforcement matters handled by foreign law firms and coordinate the preparation, execution, notarization, legalization, and apostille of documents filed with international trademark offices
- Investigate infringing uses of trademarks
- Intake client requests for searches and filings and coordinate attorney handling of matters
- Create customized trademark records reports for clients
- Support client development activities
Skills & Competencies:
- Must have a broad understanding of the USPTO’s Trademark Electronic Application System and how to prepare and file various types of trademark prosecution and maintenance documents via TEAS
- Experience with the USPTO’s Electronic System for Trademark Trials and Appeals and know how to file various types of trademark appeal and opposition/cancellation documents via ESTTA
- Demonstrate effective organizational, time management, project management, communication, and timekeeping skills
- Experience creating technically proficient written communications without typographical errors
- Demonstrate proficiency with various technologies common in trademark and brand management
- Excellent customer service skills
Qualifications & Prior Experience:
- Bachelor’s Degree required, Certificate in Paralegal studies from an accredited institution preferred; equivalent experience considered
- Certified Paralegal a plus
- Candidate will have minimum of 7 years of experience as a trademark paralegal at a law firm or 5 years of experience as a trademark professional
- Proficiency with Windows-based software and Microsoft Word, Excel and Outlook, and other informational databases required
Joe Mayer