Trademark Paralegal-Roseland, NJ

Company Name:
Considine Search
Trademark Paralegal
Roseland, NJ
Company Description
Premier, global, law firm
Job Description
Executive Summary
Position Summary/Overview: US and international trademark function, including all aspects of trademark searching, clearance, prosecution, docketing, maintenance, and enforcement. The ideal candidate would have direct experience in managing a large global trademark portfolio, as well as extensive experience with a trademark database (CPI) for the docketing of trademark deadlines and other IP matters
Essential Job Requirements:
Conduct preliminary trademark clearance searches; conduct preliminary investigations of potentially conflicting marks; review comprehensive U.S. trademark search reports and prepare first draft of analysis; coordinate with outside counsel in various countries to conduct trademark clearance searches, review results and prepare first draft reporting letter to client.
Prepare, file, docket and maintain US trademark applications and renewals, including researching and preparing descriptions of goods and services for applications
Instruct foreign counsel to file, maintain and renew international trademark applications and registrations
Coordinate with clients marketing teams to obtain evidence of use and other supporting information for US and global applications
Prepare Responses to Office Actions for the USPTO and coordinate with foreign counsel to respond to office actions internationally
Review watch service reports and conduct preliminary research for use of potentially infringing marks
Coordinate documentation for the prosecution or defense of contested matters worldwide
Review advertising, marketing and corporate materials for trademark clearance and proper usage of trademarks
Update extensive docket and status reports for circulation as needed
The ideal candidate must have strong expertise in all phases of international and US trademark prosecution.
Skills, Knowledge and Abilities:
The ideal candidate has strong expertise in supporting US and international trademark prosecution and enforcement, and is adept at managing supporting documentation through legalization processes. Experience in managing large, global portfolios preferred. A mix of law firm and in-house is a plus.
Minimum education required: Bachelors degree
Paralegal certificate
Years of relevant experience: 5 plus years of law firm and trademark paralegal experience preferred.
Extensive experience with trademark database (preferably CPI)
Experience with all aspects of US and International trademark clearance, acquisition, prosecution and maintenance
Ability to handle a large multi-national trademark portfolio
Experience assisting in trademark contested matters such as opposition and cancellation proceedings before the TTAB and internationally
Knowledge of domain name registration and copyrights is a plus
Excellent communication skills, both oral and written
Demonstrated team player with strong interpersonal and organizational skills
Ability to handle and prioritize multiple projects simultaneously
Computer literacy including familiarity with trademark docketing databases
Additional Information
Schedule: 9AM-5:00 PM
Travel is not required.

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