Trademark Prosecution Paralegal

Kilpatrick Stockton LLP•Los Angeles, CA

36d•$59 - $74•Hybrid

About The Position

Kilpatrick, a large international law firm, is seeking a Trademark Prosecution Paralegal for our Intellectual Property Department in our San Francisco or Los Angeles office with the opportunity for a flexible, partially remote schedule. This position will be part of our team of attorneys, paralegals and support staff providing a high level of service to both internal and external clients. At Kilpatrick we are one team where each person plays an integral role in serving the needs of our clients. The firm has a strong dedication to its employees, values, and commitment to the community.

Requirements

Bachelor's degree or equivalent experience required.
Minimum 5 years of Trademark work experience in a professional environment which includes progressive responsibility in managing Trademark and litigation matters.
Extensive knowledge of U.S. trademark rules and procedure; working knowledge of national laws of other countries; knowledge of Paris Convention and deadlines set therein.
Knowledge of filing requirements for convention (foreign) applications.
Proficient with electronic research tools such as Dialog, Saegis, PTO and WIPO; and conduct preliminary trademark searches.
High level of proficiency with technology including Microsoft Office Suite applications, Adobe Acrobat, Lexis/Nexis, Westlaw (and Dialog) and other internet research tools.
Excellent organizational skills, attention to detail, and the ability to multi-task.
Highly effective written and oral communications.
Exceptional ability to lead and execute projects.
Creative problem-solving abilities.
Work independently, taking initiative to move projects to conclusion.
Maintain professional demeanor in stressful situations.
Reliable and dependable team player.
Maintain confidentiality of client information.
Ability to perform well under pressure.

Nice To Haves

Paralegal Certification.
Law firm experience

Responsibilities

Review docket for deadlines; understand docket and deadlines and action needed on each file.
Conduct electronic recordation of assignment documents; review Notice of Recordation and report same to client and prepare client status reports; work with and manage large global trademark portfolios.
Comprehend chain of title in U.S. trademarks and ability to perfect same.
Assist with trademark clearance projects, including U.S. screening and full searches and international screening and formal counsel searches.
Prepare and file U.S. trademark applications, including electronic filings with follow through to registration and post-registration maintenance and renewals.
Coordinate with foreign counsel on international clearance, filing, maintenance, and renewal matters: oversee processing of foreign associates' invoices for payment and prepare reporting letters to client.
Prepare and file U.S. copyright applications, including electronic filings with follow-through to registration.
Effect portfolio transfers and manage multi-client portfolios.
Prepare and file powers of attorney and letters of instruction.
Assist in trademark filing strategy discussions and due diligence.
Assist with preparation and filing of responses of Office Actions.