Trademark Paralegal

Womble Bond Dickinson Boston , MA 02298

Posted 2 months ago

General Information

Office(s): Atlanta, GA, Baltimore, MD, Boston, MA, Charlotte, NC, Charlottesville, VA, Charleston, SC, Columbia, SC, Silicon Valley, CA, Washington, DC, Greenville, SC, Greensboro, NC, Houston, TX, Irvine, CA, Tysons Corner, VA, Raleigh, NC, RTP, NC, Wilmington, DE, Winston-Salem, NC

Practice Group: Trademarks, Copyrights & Transactions

Practice Team: Trademark

Department: Paralegal

Date Published: 12-May-2022

Salary Type: Non-Exempt

Description & Requirements

Womble Bond Dickinson (US) LLP seeks a Trademark Paralegal to be located in one of our U.S. offices.

Essential Duties and Responsibilities:

  • Order, conduct and review trademark searches and prepare preliminary summaries

  • Prepare documents for attorney review and filing with USPTO including Applications, Office Action Responses, and Amendments to Allege Use, Declarations of Use and Incontestability, Applications for Renewal, and Extensions of Time to Oppose and related Notices and Petitions

  • Monitor watch notices

  • Oversee execution and legalization of documents

  • Examine investigative summaries and prepare reports and recommendations

  • Process invoices from foreign associates and other vendors

  • Correspond with foreign associates regarding searches, filing and prosecuting applications, oppositions, registration maintenance and transfers

  • Formulate appropriate identifications of goods and services and identify appropriate specimens

  • Communicate with clients regarding trademark maintenance requirements

  • Assist with trademark due diligence, prepare and record assignments and undertake other chain of title activities related to corporate transactions

  • Monitor deadlines and coordinate with docketing team (docketing not required)

  • Coordinate trademark opposition, cancellation and other trademark disputes.

Job Requirements:

Education and/or Experience: Bachelor's degree/Paralegal Certificate preferred with five years related experience in a law firm or law department including all aspects of USPTO trademark work (prosecution, maintenance, and renewals) as well as TTAB proceedings (oppositions, cancellations)

  • Must be proactive, dedicated, positive and energetic

  • Experience handling large portfolios

  • Strong computer skills

  • Resourceful and creative self-starter

  • Balance competing active deadlines in a fast paced environment

  • Articulate with excellent communication skills

  • Superior organizational skills

  • Ability to work independently and as part of a team

  • Strong interpersonal skills

  • Fluent with SAEGIS, PTO TEAS System, Microsoft Word, Excel and Outlook

  • Domain name experience a plus Advertising review experience a plus

VACCINATION REQUIREMENTS: To help promote and ensure the safety of all of our employees and the clients we serve, you must be fully vaccinated against COVID-19 by your hire date to be eligible for starting in the role. Proof of vaccination will be required and will be kept confidential. Womble Bond Dickinson (US) LLP will provide reasonable accommodation(s) based on medical or religious grounds for qualified candidates.

An Equal Opportunity/Affirmative Action/Pro Disabled and Veteran Employer.

You can find jobs in our UK offices by clicking here

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Trademark Paralegal

Womble Bond Dickinson