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Trademark Paralegal

Company Name:
Considine Search
Trademark Paralegal
Schedule: 9AM-5:00 PM
Position Summary/Overview:
US and international trademark function, including all aspects of trademark searching, clearance, prosecution, maintenance, and enforcement
Essential Job Requirements:
Preliminary online availability searches; preliminary investigations of potentially conflicting marks; trademark search reports review; and working with outside counsel in various countries to conduct trademark clearance searches
Prepare, file and maintain US trademark applications and renewals
Instruct foreign counsel to file, maintain and renew international trademark applications and registrations
Coordinate with internal marketing clients to obtain evidence of use and other supporting information for US and global applications
Prepare Responses to Office Actions for the USPTO and work with foreign counsel to respond to office actions internationally
Review watch service reports
Coordinate documentation for the prosecution or defense of contested matters worldwide
Review advertising, marketing and corporate materials for trademark clearance and proper usage of trademarks
Assist attorneys as needed with patent matters and documentation
The ideal candidate must have strong expertise in all phases of international and US patent prosecution. Responsibilities of this position include preparation and filing of: US patent applications, Provisionals, Utilities, Continuations, Continuations-in-part; Divisionals, Designs, and US National phase applications. Preparation and handling of all related formalities, such as: Declarations, Power of Attorneys, Assignments, Formal Drawings, Information Disclosure Statements, Extensions of Time, Preliminary Amendments, and Missing Parts/Requirements, as well as client communications. Applicant must be knowledgeable in processing Notice of Allowance and Issue Fee Communications, verification of Patent Term Adjustment and Letters Patent.
Applicant must also have experience with filing via EFS-Web. Knowledge of international PCT and National Phase applications, corresponding with foreign associates and other duties related to international patents.
Skills, Knowledge and Abilities:
Minimum education required: Bachelors degree
Paralegal certificate
Years of relevant experience: 8 plus years of law firm and trademark/patent paralegal experience preferred.
Experience with all aspects of US and International trademark clearance, acquisition, prosecution and maintenance
Ability to handling a large multi-national trademark portfolio
Experience assisting in trademark/patent and contested matters
Knowledge of domain name registration and copyrights is a plus
Patent experience is a plus
Excellent communication skills, both oral and written
Demonstrated team player with strong interpersonal and organizational skills
Ability to handle and prioritize multiple projects simultaneously
Computer literacy including familiarity with trademark docketing databases

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