What are the responsibilities and job description for the Trademark Paralegal - San Francisco, CA position at Chelsea Search Group?
Sr. Trademark Paralegal
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: cfleck@chelsearecruiters.com
