TRADEMARK PARALEGAL
Web ID: LSF128050
Classification: LegalParalegalTrademark
City: Concord
State: CA
Compensation: $100,000
Education: A paralegal certificate is required. Associate of Arts degree or equivalent; or combination of education and experience is required. A Bachelor’s degree is a plus.
Summary:
Position Summary:
Historic, boutique trademark law firm in the East Bay seeks a 7+ year Trademark Paralegal for a non-exempt (paid for overtime) opportunity. The firm has a flexible work from home policy – expected to go into the office once every couple of weeks.
Hours: 35-hour workweek; 1300 billable hour requirement.
FLSA Status: Non-Exempt
Job Description: Primarily managing the trademark database, docketing trademark prosecution, and maintenance dates, preparing and filing domestic applications and registration maintenance documents, instructing and corresponding with associate firms for filing applications and maintenance of registrations internationally, conducting clearance searches, and providing support to attorneys in the rendering of trademark legal services to clients.
Primarily managing the trademark database, docketing trademark prosecution, and maintenance dates, preparing and filing domestic applications and registration maintenance documents, instructing and corresponding with associate firms for filing applications and maintenance of registrations internationally, conducting clearance searches, and providing support to attorneys in the rendering of trademark legal services to clients.
Job Requirements: Qualified candidates’ experience will include:
- Coordinating and managing domestic and international trademark applications and registration maintenance;
- Managing client trademark portfolio data and reporting;
- Communicating with attorneys, clients, and associate counsel regarding the full gamut of trademark prosecution processes;
- Preparing and shepherding documents required for applications, registration maintenance, title transfer, and the like;
- Assisting with and performing intellectual property searches and investigations, including preliminary screening searches, due diligence projects, trademark use investigations, and enforcement investigations;
- Preparing and filing USPTO Office Action responses and related correspondence as directed by attorneys;
- Assisting with U.S. and international opposition and cancellation proceedings as directed by attorneys;
- Processing incoming trademark file transfers, including trademark database updating and management, recording a change of counsel with the USPTO, and instructing associate counsel of contact information;
- Preparing trademark files for outgoing transfers;
- Maintains accurate records of time spent on tasks;
- Occasionally assisting with non-trademark-related projects.
Education/Experience:
A paralegal certificate is required. Associate of Arts degree or equivalent from two-year college or technical school; or two years related experience and/or training; or combination of education and experience is required. A Bachelor’s degree is a plus.
Computer Skills: MS Office; ProLaw; USPTO website and forms; online investigation and research programs and tools; online trademark and domain name clearance searching.
Qualified candidates’ experience will include:
- Coordinating and managing domestic and international trademark applications and registration maintenance;
- Managing client trademark portfolio data and reporting;
- Communicating with attorneys, clients, and associate counsel regarding the full gamut of trademark prosecution processes;
- Preparing and shepherding documents required for applications, registration maintenance, title transfer, and the like;
- Assisting with and performing intellectual property searches and investigations, including preliminary screening searches, due diligence projects, trademark use investigations, and enforcement investigations;
- Preparing and filing USPTO Office Action responses and related correspondence as directed by attorneys;
- Assisting with U.S. and international opposition and cancellation proceedings as directed by attorneys;
- Processing incoming trademark file transfers, including trademark database updating and management, recording a change of counsel with the USPTO, and instructing associate counsel of contact information;
- Preparing trademark files for outgoing transfers;
- Maintains accurate records of time spent on tasks;
- Occasionally assisting with non-trademark-related projects.
Education/Experience:
A paralegal certificate is required. Associate of Arts degree or equivalent from two-year college or technical school; or two years related experience and/or training; or combination of education and experience is required. A Bachelor’s degree is a plus.
Computer Skills: MS Office; ProLaw; USPTO website and forms; online investigation and research programs and tools; online trademark and domain name clearance searching.