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Trademark Prosecution Paralegal - Hybrid

Los Angeles, CA · Legal
Trademark Prosecution Paralegal-Hybrid

ESSENTIAL JOB FUNCTIONS:

  • Review 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 perfect 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.
  • Prepare and file U.S. copyright applications, including electronic filings with follow-through to registration.
  • 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:

  • Bachelor’s degree or equivalent experience required.
    • Preferred: Paralegal Certification.
  • Minimum 5 years of Trademark work experience in a professional environment which includes progressive responsibility in managing Trademark and litigation matters.
    • Preferred: Law firm experience
  • 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.
  • Knowledge of filing requirements for convention (foreign) applications.
  • Proficient with electronic research tools such as Dialog, Saegis, PTO and WIPO; and conduct preliminary trademark searches.
  • High level of proficiency with technology including Microsoft Office Suite applications, Adobe Acrobat, Lexis/Nexis, Westlaw (and Dialog) and other internet research tools.
  • Excellent organizational skills, attention to detail, and the ability to multi-task.
  • Highly effective written and oral communications.
  • Exceptional ability to lead and execute projects.
  • Creative problem-solving abilities.
  • Work independently, taking initiative to move projects to conclusion.
  • Maintain professional demeanor in stressful situations.
  • Reliable and dependable team player.
  • Maintain confidentiality of client information.
  • Ability to perform well under pressure.

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

Craig Fleck
Vice President
Chelsea Search Group
1777 Laurelwood Way
Oceanside, CA 92056
858-829-7747
cfleck@chelsearecruiters.com

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