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Trademark Paralegal

Atlanta, GA · Legal

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
Craig Fleck
Vice President
Chelsea Search Group
3050 Rue D'Orleans #317
San Diego, CA 92110
858-829-7747
cfleck@chelsearecruiters.com
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