Senior Trademark Paralegal

Ropes & Gray • Boston, MA

3d • Hybrid

About The Position

The Senior Trademark Paralegal is responsible for supporting and assisting internal and external clients on all assigned trademark, copyright and domain name prosecution matters worldwide. The Senior Trademark Paralegal is expected to have an advanced understanding of the filing requirements for U.S. and foreign trademark, copyright and domain name prosecution matters, be competent at preparing all associated documents and act as a knowledge and support resource to junior level filing paralegals. The Senior Trademark Paralegal is also expected to have expansive knowledge with respect to completing complex filings in more obscure foreign countries. The Senior Trademark Paralegal proactively monitors and ensures that all assigned filing deadlines are timely met. The Senior Trademark Paralegal works closely with his/her supervisor, other department managers and supervisors and team members to provide consistent high quality service to both internal and external clients. The Senior Trademark Paralegal also provides back-up to team members when necessary. Availability to work overtime is required.

Requirements

• Bachelor's degree and minimum of five years trademark prosecution experience; or, minimum of 10 years trademark prosecution experience.
• Experience in IP technologies essential.
• Excellent communication skills, able to work collaboratively, think creatively and take initiative.
• Excellent communication, oral, written and interpersonal skills.
• Able to maintain confidentiality in all client and firm matters.
• Able to interact effectively with all levels of personnel.
• Able to be flexible in order to respond quickly and positively to shifting demands and opportunities; able to work under tight deadlines and handle multiple, detailed tasks.
• Excellent attention to detail and able to follow up and follow through.
• Able to work in a collaborative teamwork environment and ability to share information with others.
• Able to plan, organize and carry out multiple related activities.
• Strong computer skills, including Microsoft Word, Excel and Outlook and a demonstrable ability to learn any department specific software.
• Able to maintain a professional demeanor in all situations.
• Able to work effectively in a culturally and educationally diverse environment.
• Able to work effectively in a multi-office environment.
• Able to adhere to the firm's policies, procedures and core values.

Responsibilities

• Assists attorneys in preparing trademark documents for submission to the United States Patent and Trademark Office in connection with applications from initial filing up to and including post registration processing.
• Assists in preparation of filings in connection with opposition and cancellation proceedings.
• Provides instructions to foreign associates on new applications and on subsequent matters, including, but not limited to, responses to official actions, post registration maintenance, recordation of title changes and license agreements, and filings in connection with opposition and cancellation proceedings.
• Prepares, orders and legalizes documents as needed.
• Assists attorneys on copyright and domain name matters, including, but not limited to, filing of new applications, renewals and recording changes in title.
• Assists in the preparation and filing of documents in connection with domain name dispute proceedings.
• Assists on IP due diligence projects from conducting various trademark, patent, copyright and domain name searches to reviewing chain of title to preparing report-ready charts summarizing search results.
• Performs or instructs trademark searches and assists in reviewing results.
• Reviews incoming mail, reviews watch notices, processes invoices, quality assures docket and prepares reporting correspondence as required.
• Monitors filing deadlines for all assigned matters, interprets the action to be taken and prioritizes work accordingly to ensure that all filing deadlines are met in a timely manner.
• Provides on-going quality assurance of docket for assigned matters.
• Assists with maintenance and on-going audit of digital files on assigned matters.
• Assists other department staff with related trademark matters, including, but not limited to, client intake, transfer of matters, data audits, preparation of status and docket reports.
• Provides team coverage, as required.
• Ensures that all tasks carried out are compliant with the firm's policies, processes and procedures.
• Keeps current with S. and foreign trademark practice rules and regulations and acts as a resource to other staff.
• Assists in supervision of entry and mid level paralegals and assistants.
• Serves as a mentor to and provides leadership and training for paralegals and assistants.
• Performs 1600 hours of billable work annually.

Benefits

• The firm also offers comprehensive health and well-being benefits, personal and professional development, career growth opportunities and a collegial and supportive culture.

What This Job Offers

• Job Type: Full-time
• Career Level: Mid Level
• Number of Employees: 501-1,000 employees