JOB DETAILS

The Trademark Paralegal will utilize strong knowledge and understanding of various domestic and foreign trademark prosecution matters to coordinate and assist with U.S. and foreign trademark registration efforts. Will be responsible for managing trademark portfolios, trademark clearance, US and foreign trademark prosecution, and US and foreign contentious matters. This includes multi-jurisdictional filing programs, constant communication with clients and foreign counsel concerning clearance, filing instructions, office actions, potential conflicts and similar prosecution matters. Will use appropriate computer software applications proficiently to conduct and analyze preliminary searches, including on-line investigations, and assist with comprehensive searches. Will assist with infringement and clearance investigations. Will handle all aspects of U.S. trademark prosecution. Will prepare Assignments of trademark registrations and applications and file same with USPTO and foreign offices. Will oversee execution and legalization of documents. Will provide litigation support to in-house trademark attorneys as well as U.S. and foreign counsel, including gathering and organizing evidence. Will enter and update data in trademark database (PATTSY) and generate database reports as needed. Will be depended on to quickly get up to speed on department processes and needs, as well as take initiative to follow-up and take necessary action.

JOB QUALIFICATIONS

· Experienced in trademark prosecution, maintenance and renewal, both U.S. and foreign preferred.

· Bachelor's Degree in the legal industry and/or a Legal Assistant Certificate from an ABA approved institution.

· May consider significant experience in lieu of a degree.

· Proficient in Word, Excel, and an ability learn quickly how to use other applications used by the department.

· Proficient in the use of the Internet for conducting research, including a strong knowledge of trademark clearance databases, as well as trademark investigations – online and through investigations.

· Prefer experience with PATTSY (or an equivalent docketing software), Saegis, Lexis/Nexis, Westlaw, and similar research tools.

· Trademark search and clearance experience, both preliminary and comprehensive.

· High level of communication skills requiring social sensitivity and in-depth knowledge of department procedures in order to communicate effectively with staff and management within and outside the department and external contacts, including clients, foreign associates and vendors.

· Ability to independently multi-task and take ownership of work in a fast-paced environment

· Capable of following and conveying instructions effectively with a high degree of courtesy and tact including ability to independently initiate follow-up.

· Must be a problem solver, willing to work and think with independence, handle confidential information with discretion, and accept responsibility for producing work that is consistently complete, timely, effective and accurate.

· Excellent organizational and analytical skills; detail oriented. Strong writing skills (a writing sample may be requested).