What are the responsibilities and job description for the Trademark Prosecution Paralegal - Hybrid position at Chelsea Search Group?
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.
- Preferred: Paralegal Certification.
- Minimum 5 years of Trademark work experience in a professional environment which includes progressive responsibility in managing Trademark and litigation matters.
- 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 resume to: cfleck@chelsearecruiters.com
