The Emerald Agency

"Our Talent Is Finding Yours"

Trademark Paralegal

National Law Firm’s Century City Office; Direct Hire; Salary Open DOE

The Trademark Paralegal will be responsible for assisting with all facets of the trademark prosecution process and with domain name protection, including:

  • Research and compile information pertaining to national and international intellectual property rights, particularly trademarks; Procedural matters and case law; Domain name and other Internet issues in the United States and internationally.
  • Perform on-line searches of US and other patent and trademark office records, European Intellectual Property Office (EUIPO), industry databases and legal research.
  • Conduct preliminary (knockout) trademark searches.
  • Assist attorneys with full trademark searches by compiling trademark search results, and summarize into formats such as charts or spreadsheets for easy access and dissemination to the team.
  • Prepare status summary reports on various client matters for attorneys and clients.
  • Knowledge of international trademark filing practices and procedures, and ability to work with international counsel and vendors as needed to conduct trademark searches and to file applications, renewals, affidavits of use and oppositions.
  • Knowledge of legalizations and certifications for filing of international trademarks.
  • Knowledge of USPTO, particularly pertaining to trademark portfolio and enforcement practice. Possess and apply experience with and knowledge of process for drafting and filing applications, statements of use, renewals, affidavits of use, office action responses and assignments, as well as notices of opposition and cancellation.
  • Apply enforcement strategies in order to determine potentially infringing trademark uses and domain names, and assist attorneys with execution of additional enforcement steps such as drafting cease and desist letters.
  • Knowledge of IP docket systems and ability to coordinate with Docketing team for recording of due dates for all trademark portfolio matters, including office action responses, renewals, oppositions, Section 8 and 15 affidavits, and extensions of time.
  • Assist with due diligence process including searching for trademark status and ownership/assignment information.
  • Register Internet domain names and maintain domain name portfolios.
  • Assist with preparing and filing UDRP and similar complaints to combat domain name infringement, including preparation of exhibits.
  • Monitor social media sites for infringing uses of clients’ trademarks, and prepare takedown requests through social media platforms’ complaint mechanisms.
  • Monitor ICANN developments and report relevant updates to team and clients.
  • Track down trademark file wrappers, trademark oppositions and other publically available IP related documents.
  • Familiarity with special IP related trade publications, and ability to track new trends and developments in trademark and Internet practice and report to the practice team.
  • Serve as a resource to attorneys with questions regarding trademark and Internet domain name registrations, portfolios and best practices.
  • Communicate directly with clients as appropriate

Requirements

  • Bachelor’s degree with solid academic credentials
  • 3+ years’ experience as an IP paralegal preferred, including significant work on global trademark portfolio matters and some exposure to Internet matters such as domain names and social media.
  • Excellent writing, editing and proofreading skills, with meticulous attention to detail, required

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