Trademark Paralegal

Title: Trademark Paralegal

Location: Cleveland, OH 44115

Position Status: Full-Time – Onsite

Position Description

We are an intellectual property (IP) law firm located in Cleveland’s Playhouse Square and committed to “Advancing Innovation” because we believe that a great idea can change the world. Our highly skilled and professionally recognized attorneys have focused on protecting those ideas since 1880. We are committed to a world class work environment with very competitive compensation for outstanding work.

We are seeking a Trademark Paralegal who will be responsible for documents and processes relating to trademarks. Trademark Paralegals will be expected to perform all job duties with a commitment to providing outstanding value-added service to clients and maintaining an atmosphere of teamwork and continuous improvement. This position has time-keeper requirements of 1,400 billable hours annually.

Essential Functions and Duties

The Trademark Paralegal supports attorneys in the overall operations of the firm. Responsibilities include but are not limited to:

• First cut at availability searches: run the reports and conduct internet searches for common law uses, identify conflicting uses to be included in report, and begin draft of search report.
• Review watch reports.
• Basic investigation for enforcement opinions like prior registrations, use, users, etc.
• Conduct research in TMEP, etc.
• Firm understanding of trademark concepts like filing bases, use in commerce, and specimens to support ability for handling correspondence with clients and foreign associates.
• Prepare Office Action report letters including first draft of substantive comments.
• Ability to draft first cut of more substantive documents like basic office action arguments.
• Assist attorneys in enforcement actions including TTAB proceedings and proceedings in state and federal courts.

Required Experience

• Maintain files and track docket deadlines.
• Answer emails and work with clients/foreign associates to get info we need for filings, etc.
• Prepare estimates, provide timelines, and explain basic procedures for clients.
• Work independently with foreign associates and clients to get materials we need, like POAs, other forms, etc.
• Conduct correspondence with clients and foreign associates regarding trademark prosecution and enforcement.
• Proficiency with use of the USPTO’s online filing system, includes Trademark Center, Trademark Electronic Application System (TEAS), the Assignment Branch, and the Trademark Trial and Appeal Board (TTAB)
• WIPO filings and/or renewals
• Prepare and file submissions at the USPTO, including new applications, assignments, office action responses, requests for extensions of time, statements of use, and maintenance filings.
• Gather specimens of use for submission to the USPTO.
• Strong ability to work independently, high attention to detail, and ability to figure out the status of matters by independent research.
• Timekeeping

Required Skills

• Communication – Ability to communicate clearly and accurately both verbally and in writing.
• Computer/Technical – Expertise in MS Office products, docketing systems, e-billing software, etc. Technology savvy with a preference for working digitally.
• Organization/Planning – must be able manage multiple priorities and accurately track extensive details.
• Legal knowledge – Knowledge of a variety of trademark documentation and process.

Critical Competencies

• Detail Oriented – Shows a high level of care for the quality of the work and the accuracy of detailed information.
• Flexible – Able to manage multiple priorities and respond quickly/positively to shifting demands and opportunities; ability to work under tight deadlines.
• Learning Agile – Proactively learns new skills, willing/able to learn new technologies, open to feedback and willing to take direction.
• Team Oriented – Prefers working in a team environment. Establishes and maintains good working relationships. Willing to help others and share knowledge and expertise.
• Professional – Communicates and behaves in a way that reflects positively on the firm and creates a great client experience.
• Demonstrates discretion – Can be trusted to handle confidential information discreetly.
• Problem Solving – Takes initiative to find ways to assist attorneys and advance client matters efficiently and without being asked to.

Basic Qualifications

• Bachelor’s degree and/or Paralegal certification (or equivalent experience) required.
• 3-5 years’ experience in trademarks required.
• Demonstrated experience and proficiency in using software technology including Microsoft Word, Outlook, Excel, and IP docket software, USPTO and WIPO filing systems.
• Preferred experience: Anaqua, Westlaw