TRADEMARK PARALEGAL (TM PROSECUTION)
Trademark Paralegal to support established Midtown Manhattan law firm with a busy IP practice. Position is direct-hire, salaried.
Firm offers excellent salary and benefits package.
Nice, modern offices in Midtown/ Grand Central. Excellent working environment, excellent opportunity to join one of the top IP boutiques in the country!
- Help provide strategic advice to clients regarding the availability, validity and enforceability of trademarks. Support the prevention of unauthorized use of trademarks and copyrights through litigation, arbitration and negotiation.
- Support matters before the federal court and the Trademark Trial and Appeal Board.
- Help clients establish, maintain and grow domestic and international trademark portfolios.
- Support the negotiation and structuring of trademark and copyright licenses and assignments
- Supports the shutdown on-line auctions of infringing goods
- Support the resolution of domain name disputes through negotiation, federal court litigation, and arbitration under the Uniform Domain Name Dispute Resolution Policy
Responsibilities include:
- Order, conduct and review trademark searches and prepare summaries
- Prepare documents for attorney review and filing with USPTO including Applications, Office Action Responses, and Amendments to Allege Use, Declarations of Use and Incontestability, Applications for Renewal, and Extensions of Time to Oppose and related Notices and Petitions
- Oversee execution and legalization of documents
- Monitor watch notices
- Examine investigative summaries and prepare reports and recommendations
- Process invoices from foreign associates and other vendors
- Correspond with foreign associates regarding searches, filing and prosecuting applications, oppositions, registration maintenance and transfers
- Formulate appropriate identifications of goods and services and identify appropriate specimens
- Communicate with clients regarding trademark maintenance requirements
- Assist with trademark due diligence, prepare and record assignments and undertake other chain of title activities related to corporate transactions
- Monitor deadlines (docketing not required)
- Coordinate trademark opposition, cancellation and other trademark disputes
- Support IP litigation matters as needed.
