Job Description

Sr. Trademark Paralegal
A large international law firm is seeking a Trademark Paralegal for their Intellectual Property Department. This position will be part of our team of attorneys, paralegals and support staff providing a high level of service to both internal and external clients. This firm has a strong dedication to its employees plus a commitment to the community.

Responsibilities:

• Manage trademark 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 prefect 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
• 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:

• 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 and familiarity with the Madrid Protocol
• Three (3) or more years of experience preferred
• Proficient with electronic research tools such as Saegis, USPTO and WIPO databases; and conduct preliminary trademark searches
• Proficient with USPTO electronic trademark filing systems
• Experience with Intellectual Property docketing systems
• Knowledge of filing requirements for convention (foreign) applications
• High level of proficiency with technology including Microsoft Office Suite applications, Adobe Acrobat, Lexis/Nexis, Westlaw, and other internet research tools
• Law firm experience strongly preferred
• Strong organizational and time and deadline management skills
• Ability to work confidently and efficiently under pressure and tight deadlines
• Respectful to other individuals working directly or indirectly with them
• Reliable and dependable team player who is able to adapt quickly to new surroundings
• Must be a good planner who is very detail-oriented and has the ability to organize and prioritize
• Candidate should be action and results-oriented; able to multitask daily responsibilities
• Maintain confidentiality of client information
• Must have effective daily written and oral communication skills with clients and team members
• Work independently, taking initiative to move projects to conclusion
• Ability to manage large client portfolios with numerous deadlines

To Apply: Please email your resume to: cfleck@chelsearecruiters.com

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