What are the responsibilities and job description for the Trademark Paralegal position at BGSF?
Position: Trademark Paralegal
Job Responsibilities
Job Responsibilities
- Handle trademark and copyright documents from USPTO and foreign associates
- Review daily docket report for actions due; provide reminders to responsible attorneys before the due date with consideration for sufficient response time; and confirm actions taken, updating records accordingly.
- Send reminders regarding upcoming actions due to clients and foreign associates.
- Perform routine status inquiries, updating records accordingly.
- Review all incoming mail from USPTO/CO and foreign associates, and process as appropriate:
- forward to a responsible attorney; or
- prepare form letters to clients/foreign associates for attorney review/signature and send to clients/foreign associates.
- Prepare and timely file application, maintenance, and renewal documents regarding US trademarks, copyrights, and domain names.
- Correspond with foreign associates regarding the application, maintenance, and renewal of trademarks.
- Conduct preliminary online searches for potential trademarks and report findings to a responsible attorney; order comprehensive search reports, summarize findings, and forward summary reports to the responsible attorney.
- Generate cost estimate reports for filing foreign applications and forward them to the responsible attorney.
- Prepare status reports for attorneys and clients and client activity summaries upon request.
- Miscellaneous attorney requests (research, reports, contacting IPO offices, etc.)
- Process invoices
- Strong knowledge of USPTO trademark practice and procedures
- Strong knowledge of international trademark practice and procedures, including the Madrid Protocol and Community Trademark
- Accurate, conscientious, meticulous, and pro-active
- Ability to multi-task
- Dedicated to meeting deadlines.
- Willingness and ability to complete all tasks including photocopying and other administrative duties.
- Ability to work with both attorney and secretary personalities.
- Ability to work as a cooperative member of the prosecution team.
- Bachelor’s Degree is preferred, but at least 3 years of experience in the specific field will suffice.
