Trademark Paralegal

Ropes & Gray LLP • Boston, MA

103d • $70,500 - $107,550

About The Position

The Trademark Paralegal is responsible for supporting and assisting internal and external clients on all assigned trademark, copyright and domain name prosecution matters worldwide. The Trademark Paralegal is expected to have a comprehensive understanding of the filing requirements for U.S. and foreign trademark, copyright and domain name prosecution matters and be competent at preparing all associated documents. The Trademark Paralegal is also expected to have a basic knowledge with respect to completing complex filings in the more obscure foreign countries. The Trademark Paralegal proactively monitors and ensures that all assigned deadlines are timely met. The 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 Trademark Paralegal provides back-up to team members, when necessary.

Requirements

• Bachelor's degree and minimum of three years trademark prosecution experience or minimum of five years trademark prosecution experience.
• Experience in IP technologies essential.
• Excellent communication skills.
• Able to work collaboratively, think creatively and take initiative.

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 responses to official actions, post registration maintenance, recordation of title changes and license agreements.
• Prepares, orders and legalizes documents as needed.
• Assists attorneys on copyright and domain name matters, including 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 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 U.S. and foreign trademark practice rules and regulations.
• Performs 1600 hours of billable work annually.

Benefits

• Comprehensive health and well-being benefits.
• Personal and professional development.
• Career growth opportunities.
• Collegial and supportive culture.
• Discretionary bonus based on performance.

What This Job Offers

• Job Type: Full-time
• Career Level: Entry Level
• Education Level: Bachelor's degree
• Number of Employees: 1,001-5,000 employees