Trademark Legal Practice Assistant/Paralegal

Miles & Stockbridge has positioned itself as an AmLaw 200 firm that is global in scope and in reach. Miles & Stockbridge maintains a reputation for a dynamic and approachable work environment that allows talented lawyers and staff from diverse backgrounds to thrive and grow. As part of our ongoing commitment to effect positive change, Miles & Stockbridge focuses on partnerships that benefit the community, reflect the causes our colleagues support, and allow us to collaborate with clients and neighbors to deepen relationships.

If you are looking for an employer that embraces a diverse workforce, provides ongoing professional development and mentoring, consider Miles & Stockbridge! We are seeking an experienced Patent and Trademark Legal Practice Assistant/Paralegal to support the Intellectual Property Practice Group. The ideal candidate will be skilled in both patents and trademarks. If you’d like to join our team of Legal Practices Assistants in a lively and supportive work environment, consider Miles & Stockbridge.

Trademark LPA/Paralegal Responsibilities:

• Review and respond to attorney electronic dockets and maintain secondary electronic or hardcopy dockets.
• Manage attorney workloads and communicate with attorneys no less than weekly regarding outstanding work and upcoming deadlines. Elevate any issues associated with upcoming deadlines through chain of command, if needed.
• Prepare, file and assist with the prosecution of U.S. and foreign trademark applications using the Trademark Office TSDR and TEAS systems.
• Prepare and file Copyright applications using the Copyright Office databases and ECO system.
• Conduct partial and full trademark searches and draft reports thereof.
• Conduct searches for and make preliminary analysis of acceptable specimens of use and coordinate with client to acquire specimen as needed.
• Review and draft responses to Trademark Office correspondence for attorney review and process same to send to client in a timely manner.
• Review client instructions and draft responses for attorney review and process same to send to client / Trademark Office in a timely manner.
• Correspond with foreign associates in numerous countries throughout the world to coordinate the prosecution of TMs, including correspondence regarding outstanding requirements such as specimens and descriptions of goods and services.
• Correspond with clients regarding deadlines and questions about their trademark applications and registrations with attorney supervision.
• Report filings and correspondence to clients in a timely manner.
• Use various computer software to prepare, edit and file trademark prosecution work product.
• Proofread documents for style, grammar, and typographical errors as well as for compliance with Trademark Office rules.
• Communicate verbally and in writing with clients and colleagues.
• Perform administrative and clerical tasks including client engagement letters, opening new matters, time entry, billing, and expense reports.
• Coordinate opening of new files and matters with docketing specialists to ensure proper entry of timelines and deadlines.
• Operate office equipment including computer, photocopier, telephone and postage meter.

Trademark LPA/Paralegal Qualifications:                                                                                                              

• High school diploma required.
• Minimum three (3) years of fast-paced, high volume trademark experience, including managing workloads, preparing and assisting in filing and prosecuting U.S. and foreign trademark applications, and preparing trademark correspondence.
• Experience using the Copyright Office databases and ECO system to research, prepare, and file copyright applications preferred but not required.
• Proficient Word skills, including formatting documents with headers, footers, paging numbering, and table of contents and table of authorities.
• Proficient in Excel and PowerPoint.
• Experience with the use of CPI Trademark Management System preferred but not required.
• Experience with the use of TMTKO and Clarivate SAEGIS systems preferred but not required.

Trademark LPA/Paralegal Personal Attributes:

• Effective interpersonal skills and relationship-building skills.
• Strong written and oral communication skills.
• Strong customer-service orientation.
• Work well independently and as part of the team.
• Keen attention to detail.
• Strong organization skills and time management skills.
• Able to prioritize and execute tasks in a high-pressure environment.

Miles & Stockbridge offers a competitive compensation and benefits package including PTO, medical, dental, vision, life insurance, 401K, Firm sponsored Memberships (i.e. Peloton, Norton LifeLock), and more.

Physical Demands: 

While performing the duties of this position, the employee is regularly required to remain in a stationary position or sit for prolonged periods and repeat motions that may include the wrists, hands and/or fingers. The employee is occasionally required to stand and stoop, kneel, or crouch. The employee is frequently required to perform light work that includes lifting and moving objects up to 10 pounds.

Miles & Stockbridge is not currently accepting resumes or assistance from search firms for this position.

Disclaimer and Acknowledgement:

This job description in no way states or implies that these are the only duties to be performed by the employee(s) incumbent in this position.  Employee(s) will be required to follow any other job-related instructions and to perform any other job-related duties requested by any person authorized to give instructions or assignments.

A review of this position has excluded the marginal functions of the position that are incidental to the performance of fundamental job duties.  All duties and responsibilities are essential job functions and requirements and are subject to possible modification to reasonably accommodate individuals with disabilities.  To perform this job successfully, the incumbent(s) will possess the skills, aptitudes, and abilities to perform each duty proficiently. Some requirements will exclude individuals who may pose a direct threat or significant risk to the health or safety of themselves or others.  The requirements listed in this document are the minimum levels of knowledge, skills, or abilities.  Nothing in this job description restricts management’s right to assign or reassign duties in this job description at any time for any reason.

Miles & Stockbridge is an Equal Opportunity Employer and committed to cultivating an inclusive environment that embraces and promotes diversity, equity, and inclusion as core values of our firm.