What are the responsibilities and job description for the Trademark Paralegal position at Specialized Recruiting Group?
We are assisting a boutique firm in Old Town Alexandria to find a legal trademark Specialist in the various areas of trademark and litigation; work with trademark attorney(s) regarding daily trademark/litigation responsibilities, especially upkeep of docketed Patent Office due dates; and perform other duties for the firm as may be requested.
Responsibilities:
Prepare and file new U.S. and International applications
Assist with preparation of instructions for foreign associate to file foreign trademark applications, including instruction letters, verifying foreign filing requirements and oversee the timely filing of formal documents throughout prosecution as well as during the maintenance of the foreign registration
Review Trademark Office notices for accuracy (e.g., Notices of Allowance, Notices of Publication and Certificates of Registration) and draft routine form letters.
Prepare Requests for corrected documents (e.g., Notices of Allowance, Certificates of Registration)
Draft routine client correspondence
Assist with investigation of third party use of marks
Prepare and assist with filing responses to office actions, Statements of Use, Extensions of Time, 8 & 15 Declarations, and renewal applications
Prepare charts and reports outlining the status of domestic trademark and copyright protection, etc.
Prepare and file all documents in connection with oppositions and cancellation actions
Assist with the preparation of documents to be produced with the preparation of answers to discovery requests
Compile and prepare evidence in support of pending opposition/cancellation proceedings including advertisements, invoices, declarations, affidavits, etc.
Research and assist attorneys with trademark assignments and name/address change recordals in U.S. and foreign countries.
Ensure 10 day turnaround on appropriate correspondence as required by standard Firm procedure.
Maintain daily docket for attorney(s) and prepare necessary documentation to ensure that all docket entries are cleared.
Daily upkeep and daily reconciliation of Trademark spreadsheets.
Format and proofread documents for accuracy and completeness.
Promptly review all incoming correspondence (mail/faxes/email) and prepare necessary responses/letters/billing for attorney(s) review and signature.
Coordinate filing of documents with USPTO, ensuring that all documents meet requirements concerning format and structure.
Retrieve information from USPTO web site and other Internet research.
Prepare accurate and complete debit notes and statements as required using Firm approved system (e.g., Orion).
Utilize Firm approved system (e.g., "OB Case Link Contacts") to retrieve correct client address, telephone and/or fax information.
Promptly provide corrected information to Docketing/Communications & Accounting to update firm systems (e.g., CPI, Orion, and Contacts).
Prepare/handle firm case transfers to include, but not limited to, locating, securing, sorting, reviewing, purging, boxing & preparing files for transfer.
Attend monthly secretarial and other pertinent meetings as required.
Perform other prosecution and general administrative duties/tasks as needed to support attorney(s) workload (i.e., patent and/or litigation matters, and special projects).
Assist with coverage for absent IP Specialists.
Maintain working knowledge of most current USPTO rules, regulations and procedures.
Skills: Broad understanding of all aspects of USPTO trademark work (prosecution, maintenance, and renewals) as well as TTAB proceedings (oppositions, cancellations).Knowledge of global trademark laws and procedures, trademark docketing, and copyright and domain name protection. Excellent communication skills, both oral and written, including grammar, spelling, proofreading, clarity and appropriate level of assertiveness. Ability to manage multiple projects and take initiative as appropriate. Strong attention to detail, fast and accurate typing, knowledge of Microsoft Office 2010 & Orion, and ability to work in a team environment.
Beautiful offices! Free parking, hybrid schedule, excellent firm culture! Flexible on compensation.
