JOB DESCRIPTION
An AmLaw 100 Firm in Century City is seeking an experienced Trademark Paralegal to work with their Trademarks & Copyrights Team. Qualified candidates will have at least 5+ years' experience as trademark professional. Experience with Patricia database preferred but not required. Under general supervision and according to established policies and procedures, the Trademark Paralegal will perform a variety of duties to assist attorneys to whom they are assigned. Maintains positive contact with clients and observes confidentiality of client matters. Exercises discretion and independent judgment with respect to matters of significance.
ESSENTIAL DUTIES:
- Manage trademark clearance, registration, and maintenance/renewals for clients around the world. (Principal Task)
- Maintains positive contact with clients and observes confidentiality of client matters.
- Prepares documents for filing with the Patent and Trademark Office.
- Assist in trademark and copyright diligence process for corporate matters, e.g. mergers and acquisitions.
- Prepare and file assignments of trademarks in the U.S. and coordinate the same for foreign jurisdictions.
- Convey and draft instructions to foreign counsel related to trademark matters.
- Coordinate with different in-house departments and manage foreign counsel to assure deadlines are met.
- Support attorneys to prepare documents pertinent to oppositions and cancellations.
- Assist attorneys in managing trademark clearance research results.
- Develop and execute trademark portfolio reports using commercial software.
- Create cost estimates for registrations, renewals, assignments, etc. using commercial software and coordination with foreign attorneys.
- Develop and file U.S. customs recording.
- Investigate infringing uses of trademarks
- Support brand enforcement projects including anti-counterfeiting and social media enforcement.
- Assist with filings of copyright registrations and records.
- Follows the ethical requirements as set forth by the Rules of Professional Conduct of the state.
- Maintains docketing of all maintenance deadlines.
- Reviews and analyzes matters for the purpose of preparing evaluations and status reports for internal use and for clients.
- Conducts research related to the matter using all available resources including libraries and computer data systems.
- Maintains current and accurate daily time records.
- Exercises discretion and independent judgment with respect to matters of significance.
SKILLS NEEDED TO BE SUCCESSFUL
- Ability to organize and prioritize numerous tasks and complete them under time constraints.
- Interpersonal skills necessary in order to communicate and follow instructions effectively from a diverse group of clients, attorneys and staff and provide information with ordinary courtesy and tact.
- Work typically requires more than 40 hours per week to perform the essential duties of the position; may require irregular hours.
- Ability to travel to private and public buildings, locally and statewide, via private or public conveyance to assist attorney in attending to client needs on legal matters.
EDUCATION & EXPERIENCE
- Completion of a four-year college degree is required, paralegal certificate optional.
- 5-10+ Years of experience as a Trademark paralegal.