What are the responsibilities and job description for the Trademark Paralegal position at Qualified Staffing?
Job Description
Job Description
Trademark Paralegal
Our client is a premier business law firm with international practice. Consistently recognized as one of the Best and Brightest Places to Work, our client earned this recognition by recruiting teammates with outstanding credentials. Qualified has been engaged to locate Trademark Paralegal for either of the following locations : Washington D.C., Grand Rapids, Ann Arbor, Bloomfield Hills, MI and Chicago, IL.. With 60 different areas of concentration and more than 350 attorneys, our client provides timely and cost-effective counsel to clients in numerous industries.
Summary :
The Trademark Paralegal will utilize strong knowledge and understanding of various domestic and foreign trademark prosecution matters to coordinate and assist with U.S. and foreign trademark registration efforts. Will be responsible for managing trademark portfolios, trademark clearance, US and foreign trademark prosecution, and US and foreign contentious matters.
RESPONSIBILITES
- Prepare and file U.S. trademark prosecution and maintenance documents electronically with the USPTO including but not limited to applications, office action responses, extensions of time, statements of use, affidavits, renewals, assignments and powers of attorneys
- Conduct trademark screening searches using third-search party platforms and common law searches
- Correspond with clients regarding routine phases of trademark prosecution and maintenance matters
- Prepare and file trademark documents with WIPO including but not limited to applications for International Registration, responses to Notices of Irregularity, renewals, assignments and powers of attorney
- Work with and correspond with foreign counsel in connection with prosecution and maintenance of trademark applications / registrations outside of the United States, including attending to notarization and legalization of documents
- Prepare and record ownership and change of name documents related to trademarks
- Conduct due diligence on trademark portfolios
- Prepare and file customs registrations and renewals with the U.S. Customs and Border Patrol
- Prepare cost estimates for new filings
- Assist with trademark enforcement matters including working with and corresponding foreign counsel regarding potential oppositions, cancellations and cease & desist letters
- Assist with monitoring attorney dockets and working with internal personnel to manage deadlines
- Record billable hours timely and accurately utilizing practice / firm billing protocols
- Perform other duties as necessary to fully meet the requirements of the position based on practice / client needs
- Quickly get up to speed on department processes and needs, as well as take initiative to follow-up and take necessary action.
Qualifications
Location : Washington D.C., Grand Rapids, Ann Arbor, Bloomfield Hills, MI and Chicago, IL
Schedule : 4 days in office for the first 6 months, then 3 days in office (Slightly negotiable for 3 days in office for a strong candidate)
Salary : $70K-$120K pending on the experience.
INDQT
Salary : $70,000 - $120,000
