Senior Trademark Paralegal
Location: New York, NY
The Organization: Large U.S. Based Multinational Law Firm
Salary & Benefits: Base salary up to 120K; Generous paid overtime and bonus; Medical, Dental and Vision Coverage; Transit Program; generous Paid Time Off; 401K w/match; Life Insurance; exceptional culture.
Summary: Seeking a Senior Trademark Prosecution Paralegal to support a busy New York practice. Candidate must be willing to work independently in a fast-paced, corporate environment. Well-paid overtime can be anticipated.
Key Responsibilities:
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Run searches on IP holdings (registered trademarks, patents, registered copyrights, domain names) and IP-related litigation
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Assist with filings and monitor proceedings in USPTO and Trademark Trial and Appeal Board matters
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Assist attorneys in preparing cost estimates for preparing IP ownership searches and for recording IP assignments
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Look over information memoranda and company website(s) for company background and IP information/usage
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Analyze chain of title information for trademarks, patents and copyrights (global)
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Assist attorneys in reviewing data room materials for documentation regarding registered trademarks, patents, copyrights and domain names
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Order file wrappers, copies of recorded assignments and security interests, and title documents recorded at government offices
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Compare company disclosure schedules against firm schedules and summarize discrepancies
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Draft IP assignments and IP security documents including releases and agreements
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Review IP assignments to verify proper execution including being notarized, stamped, witnessed, etc.
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Prepare recordation cover sheets or electronic filings for documents to be recorded at USPTO or Copyright Office
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Arrange for legalization of assignments for recording in foreign trademark and patent offices
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Draft instruction letters to foreign associates regarding recording assignments in their countries
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Correspond with foreign associates and communicate with seller’s and buyer’s IP counsel or in-house contact to obtain necessary documents and information for recording assignments
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Monitor and maintain trademark prosecution docket for due dates, for responses, maintenance filings, renewals, oppositions and cancellations
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Draft trademark/service mark applications, affidavits of use, maintenance and renewal filings, and assignment agreements
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Draft responses to trademark examining attorney’s official action
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Communicate with foreign trademark counsel and agents regarding registration and maintenance matters
Qualifications:
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8+ years Paralegal experience in Trademark Prosecution required
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Bachelor’s Degree strongly preferred
Knowledge of USPTO and TTAB rules, and familiarity with international trademark filing procedures, drafting correspondence, and conducting due diligence reviews of intellectual property
