Senior Trademark Paralegal - NY

Alchemy Legal - New York, NY

A large international law firm, is seeking a Trademark Paralegal for the Intellectual Property Department in our 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. The firm has a strong dedication to its employees, values, diversity and inclusion initiatives and commitment to the community.

ESSENTIAL JOB FUNCTIONS:

  • 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.
  • 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.

INTERPERSONAL SKILLS REQUIRED:

  • 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.


Posted On: Monday, November 12, 2018



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