Job Description

Responsibilities:

Prepare and file U.S. trademark prosecution and maintenance documents electronically with the USPTO including but not limited to applications, office action responses, extensions of time, statements of use, affidavits, renewals, assignments, and powers of attorneys.

• Identify and prepare appropriate specimens of use for submission to the USPTO, and communicate with clients regarding same.

• Prepare and file trademark documents with WIPO and through the Madrid Protocol, including but not limited to applications for International Registration, responses to Notices of Irregularity, renewals, assignments, and powers of attorney.

• Work with and correspond with foreign counsel in connection with prosecution and maintenance of trademark applications/ registrations outside of the United States, including attending to notarization and legalization of documents.

• Communicate with clients regarding trademark status and upcoming deadlines as needed.

• Conduct preliminary trademark clearance searches online and USPTO website.

• Prepare and file copyright applications for registration.

• Conduct due diligence on trademark portfolios and IP-related corporate transactions.

• Assist with preparation and filing TTAB petitions, motions, and other paperwork.

• Assist with investigations of third-party use of marks, preserving evidence, creating PDFs and making exhibits for briefs and other filings.

• Assist in preparation and filing of UDRP actions.

• Prepare and file, or instruct, on all aspects of US, PCT, and foreign prosecution.

• Proof and edits patent applications and office actions and prepares office actions.

• File and assist in prosecution of design applications (including convention deadlines for filing abroad).

• Review files and prepare of Information Disclosure Statements and accompanying documents.

• Assist clients with ongoing third-party patent monitoring.

• Ensure deadlines are calendared and reported; experience with using trademark docketing software systems, preferably CPI.

• Maintain a docket of IP deadlines and coordinate and communicate deadline responses with relevant attorneys and staff.

Requirements

• 5+ years of IP Prosecution experience
• College degree and/or paralegal certificate required.
• Strong working knowledge of MSOffice (Outlook, Word, Excel, PowerPoint), Relativity, and Concordance required. 
• Knowledge of iManage a plus. 

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