Current job openings

Trademark Paralegal

Posted: Tuesday, April 03, 2018 Full-Time

Details

The Minneapolis office of Norton Rose Fulbright has an immediate need for a Trademark Paralegal. The ideal candidate will have knowledge of domestic and international searching/clearance, prosecution and maintenance, and opposition/cancellation proceedings. Practice involves a large volume of small matters. Knowledge of trademark policing, trademark and copyright litigation, social media and domain name dispute procedures is a plus.

Additional responsibilities include but are not limited to:

  • Develop and maintain knowledge of Patent and Trademark Office Rules and Procedures (US and Foreign)
  • Prepare Trademark applications for filing as requested
  • Prepare formal documents, forwards to client for signature and file with the U.S. Patent and Trademark Office
  • Review office actions and other communications from U.S. Patent and Trademark Office and prepare preliminary drafts of responses as appropriate
  • Correspond with clients regarding the status of applications
  • Monitor the docket for any due dates
  • Work closely with the docketing staff to ensure all dates are docketed
  • Conduct preliminary trademark searches
  • Communicate with trademark examiners and other U.S. Patent and Trademark Office personnel regarding routine matters as directed
  • Develop and document client procedures
  • Assist as needed with operations and workflow of Minneapolis IP team

Qualifications and skills:

  • Bachelor’s Degree, required
  • Experience with trademark enforcement (policing), UDRP and TTAB proceedings, litigation and other trademark and copyright work is a plus
  • The ideal candidate will have 2+ years relevant trademark experience and an understanding of trademark laws, regulations and procedures
  • Experience managing large volume portfolios
  • Strong computer skills, including proficiency in Microsoft Office, Microsoft Excel, and Adobe Acrobat
  • Strong communication skills with the ability to interact well with people at all levels of the organization and some external parties
  • Demonstrate a positive attitude, strong judgment, initiative, integrity and be a dependable, highly motivated, team player
  • Ability to prioritize and manage multiple tasks simultaneously
  • Ability to work in a fast-paced environment and adapt quickly to changing priorities
  • Flexibility to operate independently and in a team atmosphere with a high degree of accuracy, confidentiality, and professionalism
  • Ability to work overtime when required