Trademark Enforcement Paralegal - NY

Alchemy Legal - New York, NY

Trademark Enforcement Paralegal - New York, NY 

We are working  with a large international law firm, is seeking a Trademark Enforcement Paralegal for the Intellectual Property Department in the New York office. 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. They are one team where each person plays an integral role in serving the needs of our clients. The firm has a strong dedication to its employees, values, diversity and inclusion initiatives and commitment to the community.

ESSENTIAL JOB FUNCTIONS:

  • Assist with online brand protection strategy and enforcement programs, and assist with continuously evaluating those strategies
  • File Social Media Takedown operations on e-commerce and social media platforms
  • Domain Name Portfolio Management
  • Assist with preparing and filing UDRP Complaints
  • Draft various cease and desist letters regarding infringement
  • Manage and coordinate all online brand protection cases; instruct and work with outside law firms globally for assistance
  • Responsible for tracking and reporting of all IP enforcement actions, including maintenance of database and creation of power-point presentations, excel charts, and other documents for internal and external use
  • Track and analyze data for trends in Brand Protection
  • Work with law enforcement agencies on special projects related to online sellers
  • Manage US and global trademark prosecution and maintenance matters
  • Manage trademark docket for deadlines; understand docket and deadlines and action needed on each file
  • Other duties as assigned

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 global intellectual property enforcement experience preferred
  • Four year degree, or equivalent work experience that demonstrates the ability to perform the duties of the role
  • Strong internet + digital skills
  • Applicant should be proficient in the use of modern technology across all platforms
  • 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 multi-task 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


Compensation will be commensurate with experience, salary is flexible.

 

Prestigious law firm provides great environment and working atmosphere.

 

To hear more (confidentially of course), please email your resume along with salary expectations.

 

*Referral fee applies only if and when the candidate referred to us is hired by the firm seeking candidates.

 

 

 

Thank you,

 

Hope Tocci

Talent Acquisition Specialist

[email protected]



Posted On: Wednesday, June 12, 2019



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