Paralegal - Trademark

This position assists the attorney with the administration and preparation of all trademark documentation aspects of client files and legal matters.

ESSENTIAL JOB FUNCTIONS (Including, but not limited to):

• Assist in prosecution and enforcement of trademarks domestically and internationally.
• Review, prepare, and file responses to Office Actions and Notices of Suspension; prepare and file of Statements of Use, Extension Requests, Declarations of Use, Renewals, and other requests.
• Perform trademark searches. Review watch notices, monitor and investigate third-party trademark use and monitor deadlines. Assist in trademark enforcement efforts.
• Prepare and file foreign trademark applications including via the Madrid Protocol and directly with foreign counsel.
• Correspond with foreign counsel at all stages of prosecution. Review, research, and recite foreign IP laws and requirements to clients.
• Correspondence with clients regarding all of the above.
• Assist in management and maintenance of trademark docket in Foundation IP for multiple clients and multiple attorneys. Prepare portfolio and docket deadline reports; communicate with clients regarding upcoming deadlines and requirements domestically and internationally.
• Assist in ownership transfers and recordations domestically and internationally.
• Record billable time in billing system for tasks completed.
• Advise on urgent matters.

WORKING CONDITIONS:

• Requires use of office equipment, such as computers, telephones and copiers.
• Requires occasional of lifting of up to 20 pounds.
• Requires sitting and performing computer-related activities for extended periods of time.

COMPETENCIES (KNOWLEDGE, SKILLS AND ABILITIES):

• Skill with interpersonal relationships and ability to effectively interact with all levels of staff and outside contacts.
• Ability to effectively work within a team environment.
• Skill in organizing and prioritizing of work according to timelines and importance of tasks, and following assignments through to completion.
• Strong communication, analytical, and organizational skills.
• Possess strong knowledge base of automated support systems and use of appropriate corporate software.
• Ability to work independently with minimal supervision.
• Ability to work well under pressure with deadlines – possess a sense of urgency.
• Ability to delegate tasks as needed to maximum uses of resources and cost-effectiveness for clients.
• Ability to be flexible in schedule and adaptable to constant change.
• Ability to effectively handle multiple tasks and frequent interruptions.
• Use of sound judgment and discretion working with highly confidential information.
• Job duties may require time over 37.50 hours per week.

QUALIFICATIONS:

• Paralegal certificate or Bachelor's degree is preferred.
• Experience in the IP field as a trademark paralegal with a strong grasp of the general flow of trademark prosecution and enforcement, both domestically and internationally.
• Experience with Foundation IP preferred.
• Proficient computer skills, including, but not limited to, Outlook, Word, Excel, Adobe, Foundation IP, time entry software, and many IP resources on the Internet (TSDR, TESS, TEAS, ESTTA, TTABVUE, Madrid Monitor, WIPO IP Portal, ETAS, foreign IP sites); ability to learn new software programs as needed.
• Extreme attention to detail and deadline oriented in a fast paced environment.
• Excellent research and writing skills.

SALARY & BENEFITS

Competitive base salary commensurate with experience: $75,000-$100,000 annually.

Posted salary ranges are made in good faith. Winthrop & Weinstine reserves the right to adjust ranges depending on the experience/qualifications of the selected candidate as well as internal and external equity.

Winthrop & Weinstine offers a comprehensive benefits package for all regular full time employees including health insurance, paid parental leave, 401(k), disability, life insurance, paid time off, and voluntary benefits.

EOE Statement

Winthrop & Weinstine is an equal opportunity employer. We do not discriminate on the basis of race, color, creed, religion, sex, national origin, physical or mental disability, age, veteran status, pregnancy, sexual orientation, genetic information, gender identity, or any other basis protected by state or federal law or local ordinance.