Job Description

A thriving, mid-size, full-service, mid-town Manhattan law firm seeks a Trademark Paralegal to join its IP practice. The Trademark Paralegal will be responsible for assisting with all facets of the trademark prosecution process. The ideal candidate will have a minimum of 5+ years of experience and can work autonomously.

Essential responsibilities include:

• Handling all aspects of U.S. prosecution and maintenance; preparing, filing and docketing trademark applications; preparing responses to PTO office actions; preparing and filing renewals and declarations of use; collecting evidence of use for prosecution; drafting client correspondence; recording assignments and other documents.
• Electronic docketing (FIP preferred).
• Maintenance of physical and electronic trademark files.
• Foreign and domestic trademark experience.
• Conduct, review and analyze Saegis trademark searches in U.S. and International databases.
• Communicate with the PTO and foreign associates.
• Copyright searching and filing Instructing and working with foreign counsel on clearance, trademark filings, office actions, renewals, and other prosecution and conflict matters.
• Legalization of documents.
• Performing and reviewing trademark and copyright searches, including knockout searches.
• Investigation of possible infringements.

Qualifications and skills:

• Minimum 5+ years of experience in both foreign and U.S. trademark prosecution.
• BA/BS degree, paralegal certificate is a plus.
• Familiarity with Madrid protocol.
• Excellent oral and written communication abilities.
• Detail-oriented with the ability to manage multiple priorities and track extensive details.
• Demonstrated ability to work with a wide range of sensitive and confidential issues.
• Proficiency in the use of Microsoft Office (Word, Excel and Outlook).

The firm is currently maintaining a hybrid schedule structured as Tuesdays, Wednesdays, and Thursdays in-office with the option to be remote Mondays and Fridays.

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