IP Trademark Paralegal

Role Overview

• Prepare legal documents such as applications, registrations, renewals, notices, affidavits of use, appointments, and declarations of use for review, approval, and use by attorney for filing with the USPTO
• Correspond with foreign counsel and, under the guidance of the attorney, provide instructions on applications, registrations, renewals, notices, affidavits of use, appointments, and declarations of use in their respective jurisdiction
• Perform research and analyze law sources such as statutes, recorded judicial decisions, legal articles, treaties, constitutions, and legal codes
• File legal documents with USPTO and foreign registration offices electronically (e.g. WIPO)
• Facilitate the legalization of documents for filing with foreign trademark offices (e.g., through the U.S. Secretary of State and/or applicable Consulate)
• Understand and follow the IP Practice Group’s procedures and record-keeping policies, including the use of NetDocuments for document management
• Communicate directly with clients regarding trademark matters, including notifying clients regarding due dates, obtaining signatures, and providing updates
• Utilize CPi Docketing software and review reports generated from CPi
• Assist attorneys in other areas of the firm’s Intellectual Property practice, including copyright work or licensing agreements
• Assist the attorneys in preparing for meetings, hearings or mediations
• Proofread documents prepared by attorneys
• Act as witness or notary in the execution of documents
• Accurately record time worked and enter time and description into time and billing system

Requirements

• Associates degree or Bachelor’s degree with a major in paralegal studies
• A Bachelor’s degree with an unrelated major, and have: A certificate from an ABA approved paralegal training program specializing in the area for which the candidate is being considered; or Two years’ experience in the area of specialization for which the candidate is being considered or other comparable experience; or Unique qualifications, experience, or training which fill a specific need within FBT Gibbons
• Minimum of 3 years of Trademark Intellectual Property Paralegal experience
• Ability to successfully complete the ID.me verification credentials necessary for a MyUSPTO account
• Prior experience with docketing software
• Experience working in CPI and PracticeLink is a plus
• Strong organizational skills, with the ability to prioritize and work on multiple projects with time constraints and interruptions
• Proficient with technology, including Microsoft Office (Word, Excel, Teams, Outlook)

Benefits

• Health care coverage (medical, dental, and vision)
• Life insurance
• Short
• and long-term disability
• Paid parental leave
• Employee wellbeing and EAP programs
• Paid time off
• 401(k) retirement plan with employer matching and profit-sharing