Trademark Paralegal - $100K-$110K/Year

Overview

Winston Staffing Services, a recruitment firm in NYC, is assisting a well-known, prestigious law firm in seeking candidates for their Trademark Paralegal Position.

Locations are New York, NY, Washington, DC, and St. Louis, MO.

Base salary ranges from $100,000 - $110,000/year.

Responsibilities:

· Prepare and file U.S. trademark prosecution and maintenance documents electronically with the USPTO including but not limited to: applications, office action responses, extensions of time, statements of use, affidavits, renewals, assignments and powers of attorneys

· Conduct trademark screening searches using third search party platforms and common law searches

· Correspond with clients regarding routine phases of trademark prosecution and maintenance matters

· Assist attorneys in TTAB filings, i.e. extensions of time to file a notice of opposition, consent motions

· Prepare and file trademark documents with WIPO including but not limited to applications for International Registration, responses to Notices of Irregularity, renewals, assignments and powers of attorney

· Work with and correspond with foreign counsel in connection with prosecution and maintenance of trademark

· Applications/ registrations outside of the United States, including attending to notarization and legalization of documents

· Prepare and record ownership and change of name documents related to trademarks

· Conduct due diligence on trademark portfolios

· Prepare and file customs registrations and renewals with the U.S. Customs and Border Patrol

· Prepare cost estimates for new filings

· Prepare and file copyright applications for registration

· Assist with trademark enforcement matters including working with and corresponding foreign counsel regarding potential oppositions, cancellations and cease & desist letters

· Assist with monitoring attorney dockets and working with internal personnel to manage deadlines

· Record billable hours timely and accurately utilizing practice/firm billing protocols

· Perform other duties as necessary to fully meet the requirements of the position based on practice/client needs

Experience & Qualifications:

· Attainment of at least a Bachelor's Degree is required

· 4 to 10 years working in a trademark department with at least 4 years of trademark prosecution related duties; experience with copyrights would be a plus

· Passionate about learning new skills and intellectual property

· Exceptional writing, editing, research, organizational, and analytical skills and attention to detail

· Expert in Microsoft Excel, PowerPoint, and Word

· Ability to work well under pressure and handle multiple, simultaneous tasks efficiently

· Strong work ethic, including willingness to work evenings and weekends as needed

· Professional demeanor, attention to detail, and great organizational skills are essential

· Ability to provide direction and training to junior team members

· Ability to maintain discretion and privacy with confidential matters and documents

· Ability to meet minimum billable hourly requirement