Summary of Essential Duties and Responsibilities The Trademark Paralegal responsibilities include the preparation of USPTO filings which include Applications, Office Action Responses, Amendments to Allege Use, Declarations of Use and Incontestability, and Applications for Renewal. The Paralegal assists attorneys with domestic and international trademark opposition and cancellation proceedings, which include preparation of pleadings, document productions, files documents with the Trademark Trial and Appeal Board, conducts Internet research, and assists with policing and enforcement, such as cease and desist letters, etc. The Paralegal communicates with clients regarding US and foreign trademark maintenance requirements; conducts domestic and international online trademark searches for use and registration; analyzes search results and identifies issues for attorneys; assists with trademark due diligence, examines investigative summaries and prepares reports and recommendations; instructs and liaises with international associates to oversee filing and prosecution of international applications; and oversees execution and legalization of documents.
Required Qualifications:
Bachelor’s degree and strong academic record.
Minimum four years of experience as a Trademark Paralegal in a law firm or corporation.
Ability to communicate with clients and local counsel regarding issues that may arise during prosecution, such as evidence of use requirements, reclassifications, etc.
Fluent with SAEGIS, PTO TEAS System; Microsoft Word, Excel and Outlook.
Highly motivated, positive attitude, and able to work in a team environment.
Strong organizational skills, ability to prioritize, juggle multiple tasks, and meet deadlines.
Ability to research, analyze and synthesize large amounts of data.
Excellent attention to detail skills, including ability to assess and respond to underlying detail issues and implications.
Flexibility to work overtime.
Jones Day is an Equal Opportunity Employer.
