Trademark Paralegal (DFM #728)

Company Confidential

High-profile, international law firm in downtown Dallas is seeking a highly qualified Trademark Paralegal to support a busy Intellectual Property Department!  Will assist attorneys and staff in the delivery of quality legal services to clients in an efficiency and cost-effective manner.  Must be a self-starter, have a can-do attitude and possess excellent organizational skills.

 

Essential Duties and Responsibilities:

-Preparation of domestic trademark applications, renewals, extensions of time, affidavits of use, etc. for some clients.

-Prosecution and maintenance of foreign trademark applications and registrations.

-Powers of Attorney.

-Legalization procedures.

-Prosecution of oppositions/cancellations/investigations in connection with foreign trademarks.

-Gathering evidence and related materials

-Preparing computer reports re: worldwide status of marks.

-Preparation and recordal of name changes, assignments, foreign use and registration Undertakings and Prior Right Agreements.

-International clearance searching, drafting opinion letters.

-Creation and maintenance of trademark databases and extranet sites.

-Monitor foreign trademark law developments, update related dtabase re: same.

-Knock-Out searching to initially determine non-availability of marks.

-Assist attorneys in prosecution and maintenance of U.S. trademark applications and registrations including applications, renewals, extensions of time, statements of use, section 8&15 affidavits.

-Assist attorneys in preparation of documentation for U.S. office action responses and/or oppositions.

-Docketing records for all trademark matters (including U.S. litigation).

-Preparation of quarterly, six month and annual computer docket/status reports for some clients.

-Review and approval of invoices.

-Liaison with clients concerning the foregoing.

-Attendance at conferences and/or informational meetings regarding new trademark laws and policies.

-Meeting with foreign associates in the firm’s office to discuss client matters and receive new law information.

-Other projects as assigned by the Office Administrator.

 

Qualifications:

-Minimum Bachelor’s degree or relevant work experience.

-Minimum 2 years of work experience in a law firm environment, or related professional experience.

-Thorough knowledge of trademark docketing procedures.

-Thorough knowledge of U.S. & Foreign trademark prosecution procedures and PTO rules and forms.

-Familiarity with procedures for billable time in time tracking program such as CD Entry, CPI docketing program, and File Site a plus.  Also, familiarity with Microsoft Office and e-filing with the USPTO required.

-Ability to organize and prioritize numerous tasks and complete them under time constraints.

-Ability to proofread material for contextual, grammatical, typographical or spelling errors.

-Interpersonal skills necessary to communicate in person, by email and telephone and follow instructions effectively from a diverse group of clients, attorneys and staff and provide information with courtesy and tact.

-Work may require more than 35 hours per week to perform the essential duties of the position and my require irregular hours.

 

Extent of Contact:

-Interpersonal skills necessary in order to communicate with partners, associates, paralegals, management, secretarial, support staff, vendors and building maintenance.

 

Law firm provides a very rich benefit package along with beautiful offices in downtown Dallas!

 

Salary Commensurate with experience!

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