Trademark Paralegal and Docketing Coordinator
About The Position
Rochester and Buffalo, NY Harter Secrest & Emery is a full-service law firm founded in 1894, with offices in Rochester, Buffalo, Albany, Corning, and New York City. With over 125 lawyers, we offer the depth and breadth of legal talent and experience necessary to achieve exceptional results for our local, regional, and national clients. We are seeking an experienced Trademark professional to join its Rochester or Buffalo Office. The successful candidate will be responsible for providing support for the international Trademark portfolios managed by the Intellectual Property group. The Trademark Paralegal and Docketing Coordinator works closely with attorneys and staff to protect trademarks and related intellectual property rights and to ensure client deadlines are met.
Requirements
- Bachelor’s Degree or Associate’s Degree and ABA approved paralegal certification preferred; minimum of five (5) years Intellectual Property experience, including trademark and docketing experience, or equivalent combination of experience and education sufficient to indicate ability to be successful in the position
- Strong attention to detail; accurate with docket and client information and skilled in proofreading complex material
- Demonstrates competency in Microsoft Office; ability to utilize all aspects of document management software efficiently; familiarity with PattsyWave or other docketing software a plus
- Ability to work independently, plan work and organize multi-stage projects, yet be a collaborative contributor on a focused work team
- Strong working knowledge of IP documents, terminology, forms, and procedures related to Trademarks and docketing; working knowledge of Copyrights preferred
- Advanced organizational and problem-solving skills; ability to manage a high volume of matters, respond to multiple priorities and meet varying deadlines
- Strong written and oral communication skills
Nice To Haves
- familiarity with PattsyWave or other docketing software a plus
- working knowledge of Copyrights preferred
Responsibilities
- Prepare and file documents with the USPTO in connection with the application, maintenance and renewal of U.S. trademarks; draft responses to Office Actions
- Docket and/or double docket Trademark matters (as assigned); monitor status of docket action items, run related reports, and ensure deadlines are met; communicate with attorneys, paralegals and legal assistants regarding docket action items
- Work with the Trademark team to onboard incoming client portfolios
- Initial review of Trademark watch notices; conduct, review and analyze trademark searches in US and International databases
- Work directly with clients on filing instructions, estimates and appropriate evidence of use
- Work directly with foreign associates on foreign trademark prosecution and maintenance matters to meet client deadlines
- Manage a caseload of domestic and foreign trademark opposition and cancellation matters
- Coordinate with Trademark team members on developing and refining workflow practices and efficiencies
- Assist with trademark searches and perform investigations relating to potential infringement or complaints; assist clients with brand registries and filing take down requests
Benefits
- Excellent benefits package
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What This Job Offers
Job Type
Full-time
Career Level
Mid Level
Education Level
Associate degree
