Trademark Paralegal – Menlo Park, CA – (Mainly Remote)

Chelsea Search Group
Published
September 23, 2022
Location
Menlo Park, CA
Category
Job Type

Description

Trademark Paralegal - (95% Remote)
A large international law firm is seeking a Trademark Paralegal for their Intellectual Property Department. This position will be part of our team of attorneys, paralegals and support staff providing a high level of service to both internal and external clients. This firm has a strong dedication to its employees plus a commitment to the community.

Responsibilities:

  • Manage trademark docket for deadlines; understand docket and deadlines and action needed on each file
  • Conduct electronic recordation of assignment documents; review Notice of Recordation and report same to client and prepare client status reports; work with and manage large global trademark portfolios
  • Comprehend chain of title in U.S. trademarks and ability to prefect same
  • Assist with trademark clearance projects, including U.S. screening and full searches and international screening and formal counsel searches
  • Prepare and file U.S. trademark applications, including electronic filings with follow through to registration and post-registration maintenance and renewals
  • Coordinate with foreign counsel on international clearance, filing, maintenance and renewal matters: oversee processing of foreign associates' invoices for payment, and prepare reporting letters to client
  • Effect portfolio transfers and manage multi-client portfolios
  • Prepare and file powers of attorney and letters of instruction
  • Assist in trademark filing strategy discussions and due diligence
  • Assist with preparation and filing of responses of Office Actions

KNOWLEDGE/SKILLS REQUIRED:

  • Extensive knowledge of U.S. trademark rules and procedure; working knowledge of national laws of other countries; knowledge of Paris Convention and deadlines set therein and familiarity with the Madrid Protocol
  • Three (3) or more years of experience preferred
  • Proficient with electronic research tools such as Saegis, USPTO and WIPO databases; and conduct preliminary trademark searches
  • Proficient with USPTO electronic trademark filing systems
  • Experience with Intellectual Property docketing systems
  • Knowledge of filing requirements for convention (foreign) applications
  • High level of proficiency with technology including Microsoft Office Suite applications, Adobe Acrobat, Lexis/Nexis, Westlaw, and other internet research tools
  • Law firm experience strongly preferred
  • Strong organizational and time and deadline management skills
  • Ability to work confidently and efficiently under pressure and tight deadlines
  • Respectful to other individuals working directly or indirectly with them
  • Reliable and dependable team player who is able to adapt quickly to new surroundings
  • Must be a good planner who is very detail-oriented and has the ability to organize and prioritize
  • Candidate should be action and results-oriented; able to multitask daily responsibilities
  • Maintain confidentiality of client information
  • Must have effective daily written and oral communication skills with clients and team members
  • Work independently, taking initiative to move projects to conclusion
  • Ability to manage large client portfolios with numerous deadlines
To Apply: Please email your resume to: [Click Here to Email Your Resumé]
Apply
Drop files here browse files ...

Related Jobs

October 2, 2022
October 2, 2022
Technology Solutions Leader   San Jose, CA new
October 2, 2022
Network IP Engineer L3   Fremont, CA new
October 2, 2022
Kitchen Manager - Newark   Newark, CA new
October 2, 2022

Author: