CA - SAN DIEGO Paralegal, Trademark

Jones Day

$95K — $130K *
Legal & Accounting
Less than 5 years of experience
Job Overview by Ladders

Qualifications

  • Bachelor's degree and strong academic record
  • Minimum four years of experience as a Trademark Paralegal
  • Paralegal certificate or equivalent
  • Experience with client communication regarding prosecution issues
  • Proficiency in SAEGIS, PTO TEAS System, Microsoft Word, Excel, and Outlook
  • Strong organizational skills with the ability to prioritize tasks
  • Excellent attention to detail and analytical skills

Responsibilities

  • Prepare USPTO filings including applications and responses
  • Assist attorneys with trademark opposition and cancellation proceedings
  • Conduct internet research and assist with trademark enforcement
  • Communicate with clients about trademark maintenance requirements
  • Perform domestic and international trademark searches
  • Analyze search results and prepare recommendations for attorneys
  • Liaise with international associates for application filings

Benefits

  • Competitive salaries
  • Comprehensive benefits package
  • Opportunities for professional development and growth
  • Work in a supportive team environment
  • Dynamic and fast-paced legal culture
Full Job Description
Summary of Essential Duties and Responsibilities:

The Trademark Paralegal is responsible for 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.

Summary of Essential Duties and Responsibilities:
The Trademark Paralegal is responsible for 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.
  • Paralegal certificate or equivalent.
  • 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 offers competitive salaries and benefits to all employees. Compensation is determined upon the market in which the position is located, the responsibilities of the position, the experience and skills of the applicant, and other job-related factors. The starting pay scale for this position is $95,000 - $130,000.

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