What are the responsibilities and job description for the Trademark Paralegal Expertise position at Affordable Personnel Services?
About the Job Function
The Intellectual Property Prosecution Paralegal plays a critical role in the successful prosecution and maintenance of trademarks, copyrights, and other intellectual property rights for our clients. This position requires strong organizational skills, attention to detail, and excellent communication skills to work effectively with clients and internal teams.
Key Responsibilities
Filing and prosecuting trademark applications with the USPTO, including:
- Preparation and filing of electronic documents, such as applications, office action responses, extensions of time, statements of use, affidavits, renewals, assignments, and powers of attorney.
- Identification and preparation of specimens of use for submission to the USPTO.
Filing and prosecuting trademark applications with WIPO and through the Madrid Protocol, including:
- Applications for International Registration.
- Responses to Notices of Irregularity.
- Renewals.
- Assignments.
- Powers of attorney.
Working with foreign counsel to prosecute and maintain trademark applications/registrations outside of the United States, including:
- Notarization and legalization of documents.
Providing client updates and notifications on trademark status and upcoming deadlines as needed.
Conducting preliminary trademark clearance searches online and on the USPTO website.
Filing copyright applications for registration.
Conducting due diligence on trademark portfolios and IP-related corporate transactions.
Assisting with preparation and filing of TTAB petitions, motions, and other paperwork.
Assisting with investigations of third-party use of marks, preserving evidence, creating PDFs, and making exhibits for briefs and other filings.
Assisting in preparation and filing of UDRP actions.
Filing and assisting in the prosecution of design applications (including convention deadlines for filing abroad).
Reviewing files and preparing Information Disclosure Statements and accompanying documents.
Assisting clients with ongoing third-party patent monitoring.
Ensuring deadlines are calendared and reported, utilizing trademark docketing software systems (preferably CPI).
Maintaining a docket of IP deadlines and coordinating and communicating deadline responses with relevant attorneys and staff.
Qualifications
- Highly organized with strong prioritization skills.
- Excellent written and verbal communication skills.
- College degree and/or paralegal certificate required.
- MS Office (Outlook, Word, Excel, PowerPoint) proficiency required.
- Relativity and Concordance knowledge required.
- iManage knowledge a plus.
