Intellectual Property/Trademark Paralegal (DFM #224)

Global, high-profile, law firm is seeking an experienced Intellectual Property/Trademark Paralegal for their Dallas office in Uptown.  This paralegal supports 3 attorneys in Dallas and will assist other offices, as well.  This position is in the Firm’s Technology and Life Sciences Practice Group.  Must have attention to detail, ability to work independently, deadline oriented, proactive, and strong communication skills.  The Paralegal must be comfortable doing substantive work and managing a case.  Also, the Paralegal will work on exciting, high-profile, and relevant trademarks for large, international clients!

Duties & Responsibilities:

• Manage domestic and foreign prosecution for multiple clients, including drafting trademark/service mark applications, affidavits of use, maintenance and renewal documentation and correspondence to clients.
• Drafts responses to office actions issued by the USPTO.
• Communicates with and manages foreign trademark counsel and agents regarding registration, maintenance and enforcement matters.
• Monitors and maintains trademark docket for due dates for responses, maintenance filings, renewals, oppositions, cancellations and office actions.
• Orders and analyzes trademark searches and assists attorneys in compiling results from searches to provide clearance analysis.
• Conducts in-house trademark searches and assists attorneys in compiling results from searches to provide clearance analysis.
• Handles all types of filings at the USPTO and Trademark Trial and Appeal Board in order to prosecute, maintain, and enforce trademarks.
• Assists attorneys in preparing cost estimates for trademark clearances, prosecution, recordation with the USPTO and Copyright Office, and maintenance.
• Performs due diligence ownership searches on trademarks, copyrights, and domain names in connection with corporate and finance transactions, including analyzing chain of title information and preparation of appropriate assignments, IP security agreements, and releases.
• Orders file wrappers, copies of recorded assignments and security interests, and title documents recorded at government offices.
• Reviews executed IP assignments to ensure they are properly executed, notarized, stamped, witnessed, etc.
• Prepares recordation cover sheets or electronic fillings for documents to be recorded at USPTO or Copyright office.
• Arranges for legalization (by consulate or Apostille) of assignments for recording foreign trademark and patent offices.
• Prepares draft cease and desist demands and required follow-up.
• Reviews trademark watch notices, conducts initial investigation of potentially problematic references, and assists with resulting enforcement actions.
• Prepares draft of UDRP complaints and assists with filling and associated actions.
• Prepares draft copyright applications and assists with filing with Copyright Office.
• Prepares draft DMCA take down requests.
• Mentors and trains junior Paralegals as appropriate.
• Performs other work related duties as assigned or as judgment or necessity dictates.

Qualifications:

• Minimum 5 years of focus on Intellectual Property/Trademark work, including knowledge of USPTO and TTAB rules and procedure.
• Familiarity with international trademark filing procedures and conducting due diligence reviews of Intellectual Property.
• Adept in drafting correspondence and diligence memoranda, and preparing of worldwide assignments and recordings.

Preferred:

Bachelor’s Degree

Other Skills & Abilities:

• Excellent research and communication skills.
• Strong analytical, problem solving, and organizational skills.
• The use of good judgment and good interpersonal communication skills.
• Works harmoniously and effectively with others as part of a team.
• A self-starter who desires to show ownership and commitment to the job.
• Exercises confidentiality and discretion.

The Firm provides an exceptional benefit package along with beautiful offices in Dallas!  The hours are 8:30-5:00 and also flexible to 9:00-5:30. Must be flexible with overtime depending upon the workload.  Billable hours are 1650/year.

Salary:  Top salary offered will depend upon qualifications and other operational considerations.