Trademark Paralegal - #8317178

Stinson LLP


Date: Oct 13, 2021
City: Clayton, MO
Contract type: Full time
Stinson LLP

Summary
The Trademark Paralegal, under the direction of a supervising attorney, will assist in the administration of trademarks, and provide limited backup coverage for the administration of patent registrations subject to experience, if available. Primary responsibilities will be to assist the Stinson LLP Trademark team by retrieving, analyzing and reporting the status of registrations, both foreign and domestic; and performing other tasks as necessary relating to prosecution of global trademark portfolios for clients. This includes handling certain aspects of U.S. and foreign trademark prosecution and maintenance, and corresponding with foreign associates. Responsibilities also include performing searches relating to due diligence projects. The paralegal will interact regularly with Firm attorneys and other members of the IP Group, as well as clients, counsel and outside vendor personnel.
Required Education & Experience

  • Completion of either of the following:
  • (a) Bachelor's degree or (b) Associate’s degree and minimum of 1 year law firm experience in a Paralegal capacity, or 2 to 5 years of complex law-related experience under the supervision of an Attorney or Senior Paralegal;
  • AND, in addition to (b), completion of an educational program for Paralegals approved by the American Bar Association ("ABA") or offered by an accredited institution which follows ABA guidelines for Paralegal programs.
  • Docketing management system experience such as CPI, CPA or PATTSY.

Preferred Education & Experience

  • Law Firm experience preferred.
  • Trademark prosecution experience preferred; patent prosecution experience a plus.

Essential Functions
Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.

  • Paralegal (75%)
  • Administer, maintain, and oversee entries into the trademark database containing Firm client registrations and deadlines.
  • Collaborate with the attorneys in maintaining Firm client trademark registrations by communicating with the attorney or client on various trademark matters including: trademark application filings, maintenance filings, renewal instructions, Statement of Use and extension of time filings, Declarations of Use, Sections 8, 9 and 15 renewal filings, drafting specification of goods and services and related amendments, reviewing and obtaining trademark specimens, and responses to office actions.
  • Prepare trademark assignments, record ownership transfers with USPTO, and coordinate ownership transfer recordation for foreign registrations/applications.
  • Prepare Madrid Protocol applications and prepare and submit all filings related to International Registrations including subsequent designations, maintenance, and ownership updates.
  • Conduct preliminary trademark clearance searches and report results to the attorney.
  • Prepare and submit filings with the USPTO for new applications, renewals, Statements of Use, responses to office actions, assignments, various petition forms, and all TTAB proceeding filing.
  • Prepare and file state applications and renewals.
  • Continuously monitor all deadlines and prepare and send notices to clients regarding upcoming deadlines and requirements.
  • Correspond with foreign associates regarding new filings, prosecution and related deadlines, and billings.
  • Prepare formal papers, correspond with clients to obtain signatures and coordinate all levels of legalization for foreign matters when required.
  • Coordinate file intake and matter entry in tracking system for new clients.
  • Review trademark watch notices and prepare draft cease and desist letters.
  • Anticipate attorney and client needs for specific projects.
  • Delegate effectively and as appropriate with other Paralegals or Legal Administrative Assistants.
  • Design, recommend, and implement new processes and procedures to increase group efficiency.
  • Special projects, as needed.
  • Act as a liaison among various internal departments as well as with outside agencies.
  • Meet billable hour requirement of 1550 per year.
  • General and Administrative (25%)
  • Time entry, scanning, e-mailing, etc.
  • Assist in Firm marketing for practice area.
  • Performs other duties as assigned.

Competencies

  • Strong verbal and written communication skills.
  • Self-motivated with excellent attention to detail, organizational skills and the ability to effectively prioritize
  • Highly professional with a strong customer service orientation, commitment to meeting deadlines, and ability to multitask in a fast-paced and dynamic environment.
  • Strong professional, independent thinking skills with strength in problem solving and the ability to offer constructive opinions and creative solutions.
  • A team player who motivates and educates other team members.
  • Regular and predictable attendance is an essential function of the position.

Supervisory Responsibility
This position has no supervisory responsibilities.
Travel
Minimal travel is expected for this position.
Work Environment & Physical Demands
This job operates in a professional office environment. This role routinely uses standard office equipment such as computers, phones, photocopiers, filing cabinets and fax machines. While performing the responsibilities of the position, these work environment characteristics are representative of the environment the person in this position will encounter. While performing the duties of this job, the employee will work in a professional, fast paced office environment that may require additional hours to complete work.
These physical demands are representative of the physical requirements necessary for an employee to successfully perform the essential functions of the position. If an employee is unable to perform the essential functions of the position, Stinson LLP will evaluate whether a reasonable accommodation can be made to enable the employee to perform the described essential functions of the position. Generally, due to the nature of this office position, while performing the responsibilities of the position, the employee is required to talk and hear. The employee is often required to sit and use their hands and fingers, to handle or feel. The employee is occasionally required to stand, walk, reach with arms and hands, climb or balance, and to stoop, kneel, crouch or crawl. The employee must regularly lift and/or move up to 10 pounds, occasionally lift and/or move up to 25 pounds. Vision abilities required by the job include close vision.
AAP/EEO Statement
Stinson LLP is an equal opportunity employer. We encourage qualified minority, female, veteran, disabled and other diverse candidates to apply and be considered for open positions. We offer a competitive compensation and benefits package.
Stinson LLP is a federal contractor. Information gathered through applicant Voluntary Self-Identification will be used periodically with various government agencies for statistical reporting and to measure the effectiveness of our Affirmative Action and EEO outreach efforts. All information is requested on a voluntary basis and will be kept confidential. We will not discharge or in any other manner discriminate against employees or applicants because they have inquired about, discussed, or disclosed their own pay or the pay of another employee or applicant.
Applicants with a disability that are in need of an accommodation to complete the Stinson LLP application process should contact Human Resources at 316.268.7962 or email Talent@stinson.com.
By submitting this application, you certify the information provided is true to the best of your knowledge and belief. You understand that being untruthful in response to any of the answers provided within this application or any of the attached documents may lead to your termination in the event you are employed. If employed, you will be required to provide documentation showing you are legally authorized to work in the United States. We conduct criminal background checks of all individuals offered employment.

Equal Opportunity Employer/Protected Veterans/Individuals with Disabilities
The contractor will not discharge or in any other manner discriminate against employees or applicants because they have inquired about, discussed, or disclosed their own pay or the pay of another employee or applicant. However, employees who have access to the compensation information of other employees or applicants as a part of their essential job functions cannot disclose the pay of other employees or applicants to individuals who do not otherwise have access to compensation information, unless the disclosure is (a) in response to a formal complaint or charge, (b) in furtherance of an investigation, proceeding, hearing, or action, including an investigation conducted by the employer, or (c) consistent with the contractor’s legal duty to furnish information. 41 CFR 60-1.35(c)

Job Type: Full-time

Work Location: Multiple Locations

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