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Trademark Paralegal

Boston, MA · Legal
We are seeking a Trademark Paralegal

GENERAL SUMMARY: The Trademark Paralegal has overall responsibility for global trademark management of the assigned clients’ trademark portfolios, including U.S. and foreign trademark prosecution, maintenance, searching, clearance and enforcement, and also assists attorneys with TTAB proceedings.
·        Preparing and filing relevant documents related to the prosecution and/or maintenance of U.S. and foreign trademarks.
·        Assisting attorneys in the filing of opposition or cancellation documents, both U.S. and foreign, and the management of those actions.
·        Corresponding directly with clients and foreign associates on routine trademark prosecution, opposition, cancellation and maintenance matters.
·        Drafting detailed client and foreign associate communications for attorney review.
·        Assisting the docketing department in maintaining accurate trademark and copyright docketing records.
·        Assisting attorneys with TTAB filings, including working with docketing to maintain accurate TTAB records.
·        Conducting and analyzing preliminary clearance searches.
·        Performing initial review of full clearance searches.
·        Conducting research on U.S. and foreign trademark law as necessary.
·        Conducting research on third-party trademarks.
·        Review third-party watch notices for client trademarks and domain name.
·        Preparing and recording ownership documents and/or licenses related to U.S. and foreign trademarks, copyrights and domains.
·        Conducting due diligence on trademark portfolios.
·        Preparing and filing copyright applications.
·        Assisting attorneys on various domain name procedures.
·        Assisting and handling special projects as assigned.
At least three years’ experience with U.S. and foreign trademark prosecution, and some familiarity with copyrights, domains and TTAB proceedings.
Familiarity with worldwide trademark laws and procedures including Madrid Protocol, and experience in conducting research re same.
Ability to conduct preliminary trademark searches (for example, in SAEGIS or CORSEARCH), perform preliminary analysis of clearance searches, and use the Internet for research in connection with trademark clearance or third-party matters.
Familiarity with TEAS electronic filing procedures.
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