Trademark Paralegal

Summary

The Trademark Paralegal, under the direction of a supervising attorney, will assist in the administration of trademarks. Primary responsibilities will be to assist the Stinson LLP trademark team by conducting and analyzing trademark clearance searches; retrieving, analyzing and reporting the status of registrations, both foreign and domestic; and performing other tasks as necessary relating to prosecution of global trademark portfolios for clients. This includes handling certain aspects of U.S. and foreign trademark prosecution and maintenance and corresponding with foreign associates. Responsibilities also include performing searches relating to due diligence projects. The paralegal will interact regularly with Firm attorneys and other members of the IP group, as well as clients, counsel and outside vendor personnel.

Please submit your application by no later than 45 days following the posted date. Applications received after this date may not be considered.

Required Education & Experience

• Completion of either of the following:
  
  
  
  • (a) Bachelor's degree or (b) Associate's degree and minimum of 1 year law firm experience in a Paralegal capacity, or 2 to 5 years of complex law-related experience under the supervision of an Attorney or Senior Paralegal;
  • AND, in addition to (b), completion of an educational program for Paralegals approved by the American Bar Association ("ABA") or offered by an accredited institution which follows ABA guidelines for Paralegal programs.
  
  
  
  
• Docketing management system experience such as CPI, CPA or PATTSY.

Preferred Education & Experience

• Law Firm experience preferred.
• Trademark prosecution experience preferred; patent prosecution experience a plus.

Essential Functions

Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.

• Paralegal (75%)
  
  
  
  • Administer, maintain, and oversee entries into the trademark database containing Firm client registrations and deadlines.
  • Collaborate with the attorneys in maintaining Firm client trademark registrations by communicating with the attorney or client on various trademark matters including: trademark filings, maintenance filings, renewal instructions, extension of time filings, declarations of use, Section 8, 9 and 15 filings, drafting specification of goods and services and related amendments, and responses to office actions.
  • Prepare trademark assignments, record ownership transfers with USPTO, and coordinate ownership transfer recordation for foreign registrations/applications.
  • Prepare Madrid Protocol applications and prepare and submit all filings related to International Registrations including subsequent designations, maintenance, and ownership updates.
  • Conduct preliminary trademark clearance searches and report results to the attorney.
  • Prepare and submit filings with the USPTO for new applications, renewals, Statements of Use, responses to office actions, assignments, various petition forms, and all TTAB proceeding filing.
  • Prepare and file state applications and renewals.
  • Continuously monitor all deadlines and prepare and send notices to clients regarding upcoming deadlines and requirements.
  • Correspond with foreign associates regarding new filings, prosecution and related deadlines, and billings.
  • Prepare formal papers, correspond with clients to obtain signatures and coordinate all levels of legalization for foreign matters when required.
  • Coordinate file intake and matter entry in tracking system for new clients.
  • Review trademark watch notices and prepare draft cease and desist letters.
  • Anticipate attorney and client needs for specific projects.
  • Delegate effectively and as appropriate with other Paralegals or Legal Administrative Assistants.
  • Design, recommend, and implement new processes and procedures to increase group efficiency.
  • Special projects, as needed.
  • Act as a liaison among various internal departments as well as with outside agencies.
  • Meet billable hour requirement of 1550 per year.
  
  
  
  
• General and Administrative (25%)
  
  
  
  • Time entry, scanning, e-mailing, etc.
  • Assist in Firm marketing for practice area.
  • Performs other duties as assigned.
  
  
  
  

Competencies

• Strong verbal and written communication skills.
• Self-motivated with excellent organizational skills and attention to detail.
• Highly professional with a strong customer service orientation, commitment to meeting deadlines, and ability to multitask in a fast-paced and dynamic environment.
• Strong professional, independent thinking skills with strength in problem solving and the ability to offer constructive opinions and creative solutions.
• A team player who motivates and educates other team members.
• Regular and predictable attendance is an essential function of the position.

Supervisory Responsibility

This position has no supervisory responsibilities.

Travel

Minimal travel is expected for this position.

Work Environment & Physical Demands

This job operates in a professional office environment. This role routinely uses standard office equipment such as computers, phones, photocopiers, filing cabinets and fax machines. While performing the responsibilities of the position, these work environment characteristics are representative of the environment the person in this position will encounter. While performing the duties of this job, the employee will work in a professional, fast paced office environment that may require additional hours to complete work.

These physical demands are representative of the physical requirements necessary for an employee to successfully perform the essential functions of the position. If an employee is unable to perform the essential functions of the position, Stinson LLP will evaluate whether a reasonable accommodation can be made to enable the employee to perform the described essential functions of the position. Generally, due to the nature of this office position, while performing the responsibilities of the position, the employee is required to talk and hear. The employee is often required to sit and use their hands and fingers, to handle or feel. The employee is occasionally required to stand, walk, reach with arms and hands, climb or balance, and to stoop, kneel, crouch or crawl. The employee must regularly lift and/or move up to 10 pounds, occasionally lift and/or move up to 25 pounds. Vision abilities required by the job include close vision.

EEO Statement

Stinson LLP is an equal employment opportunity (EEO) employer. We encourage qualified minority, female, veteran, disabled, and other diverse candidates to apply to be considered for open positions. We offer a competitive compensation and benefits package. We conduct criminal background checks on all individuals offered employment. Information gathered through applicant voluntary self-identification will be used for statistical reporting and to measure the effectiveness of our EEO outreach efforts. All information is requested on a voluntary basis and will be kept confidential. We will not discharge or in any other manner discriminate against employees or applicants because they have inquired about, discussed, or disclosed their own pay or the pay of another employee or applicant.

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