Trademark Prosecution Paralegal-Hybrid

Trademark Prosecution Paralegal-Hybrid

ESSENTIAL JOB FUNCTIONS:
•    Review 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 perfect 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.
•    Prepare and file U.S. copyright applications, including electronic filings with follow-through to registration.
•    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:
•    Bachelor’s degree or equivalent experience required.
o    Preferred: Paralegal Certification.
•    Minimum 5 years of Trademark work experience in a professional environment which includes progressive responsibility in managing Trademark and litigation matters.
o    Preferred: Law firm experience
•    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.
•    Knowledge of filing requirements for convention (foreign) applications.
•    Proficient with electronic research tools such as Dialog, Saegis, PTO and WIPO; and conduct preliminary trademark searches.
•    High level of proficiency with technology including Microsoft Office Suite applications, Adobe Acrobat, Lexis/Nexis, Westlaw (and Dialog) and other internet research tools.
•    Excellent organizational skills, attention to detail, and the ability to multi-task.
•    Highly effective written and oral communications.
•    Exceptional ability to lead and execute projects.
•    Creative problem-solving abilities.
•    Work independently, taking initiative to move projects to conclusion.
•    Maintain professional demeanor in stressful situations.
•    Reliable and dependable team player.
•    Maintain confidentiality of client information.
•    Ability to perform well under pressure.
To Apply: Please email your resume to: cfleck@chelsearecruiters.com