General Information

Office(s): Raleigh, NC

Practice Group: Trademarks, Copyrights, Privacy and IP Transactions

Practice Team: Trademark

Department: Paralegal

Date Published: 22-Apr-2024

Salary Type: Non-Exempt

Description & Requirements

Womble Bond Dickinson (US) LLP seeks a Trademark Paralegal for our Raleigh, NC office.

Essential Duties and Responsibilities:

• Prepare documents for attorney review and filing with USPTO including Applications, Office Action Responses, Declarations of Use and Incontestability, Applications for Renewal, and Extensions of Time to Oppose
• Draft appropriate identifications of goods and services and identify appropriate specimens
• Order, conduct and review trademark searches and prepare preliminary summaries
• Monitor watch notices
• Manage execution and legalization of documents
• Review investigative summaries and prepare reports and recommendations
• Correspond with foreign associates regarding searches, filing and prosecuting applications, oppositions, registration maintenance and transfers
• Communicate with clients regarding trademark maintenance requirements
• Assist with trademark due diligence, prepare and record assignments and undertake other chain of title activities related to corporate transactions
• Monitor deadlines and coordinate with docketing team (docketing not required)
• Coordinate trademark opposition, cancellation and other trademark disputes
• Process invoices from foreign associates and other vendors

Job Requirements:

Bachelor's degree/Paralegal Certificate preferred with five years related experience in law firm or law department including all aspects of USPTO trademark work (prosecution, maintenance, and renewals) as well as TTAB proceedings (oppositions and cancellations).

• Must be proactive, dedicated, positive and energetic
• Excellent written and oral communications skills
• Experience handling large portfolios
• Strong computer skills
• Resourceful and creative self-starter
• Balance competing active deadlines in a fast-paced environment
• Superior organizational skills
• Ability to work independently and as part of a team
• Strone interpersonal skills
• Fluent with SAEGIS, PTO TEAS System, Microsoft 365, including Outlook, Word, Excel and Teams
• Domain name experience a plus
• Advertising review experience a plus

An Equal Opportunity/Affirmative Action/Pro Disabled and Veteran Employer.

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