Senior Trademark Paralegal

Please send resume in WORD format should you be interested in the following Senior Trademark Paralegal position with our law firm client. This role can be located in New York City or Boston.

This is a full-time, direct-hire position with a salary dependent on experience and location plus excellent benefits. If you are not interested, please pass along to your colleagues as we do pay referral fees.

Title: Senior Trademark Paralegal

Department: Paralegal

Reports to: Paralegal Manager

FLSA Classification: Non-Exempt

Salary: $120K-150K/year

Location: New York City or Boston

**** Candidates must have large law firm experience as part of their work history

**** Candidates must have Trademark Prosecution Paralegal experience as part of their work history, and not solely IP experience

Job Summary:

This position works under the direct supervision of a lawyer and provides the lawyer substantive legal services.  A lawyer may delegate any task normally performed by a lawyer to a Paralegal Specialist, except those tasks prohibited to a non-lawyer by statute, court rule, administrative rule or regulation, controlling authority, the applicable rule of professional conduct of the jurisdiction in which the lawyer practices, or the ABA Guidelines for the Utilization of Paralegal Services.

Responsibilities:

Trademark:

• Prepare and file foreign and domestic trademark applications, statements of use, extensions of time, amendments to allege use, Sections 8 & 15 declarations, and other filings;


• Draft communications with clients and foreign associates;


• Preliminary trademark availability searching


• Review office actions and summarize issues for attorneys;


• Perform internal trademark searches and/or initial review of outside vendor search reports and preparing charts and draft findings;


• Draft filing instructions for trademark applications;


• Reporting deadlines to docketing and docket clearance;


• Client communications, including reporting actions, deadlines and providing accurate charts of client’s prosecution matters;


• Preparing agendas for monthly client calls;


• Make preliminary evaluations regarding potential specimens showing use for submission.


• Assist with TTAB proceedings and trademark litigation, including drafting and filing of documents, maintaining pleadings files and docket, searching for third party marks or evidence of use and related tasks


• Copyright experience or willingness to learn.

GENERAL:

• Drafts, analyzes, and prepares legal documents for a supervising lawyer or supervising paralegal[1].


• Coordinates legal projects and communicates legal information for a supervising lawyer or supervising paralegal.


• Prepare draft communications for a supervising lawyer or supervising paralegal.


• Collects, evaluates, and summarizes relevant facts and legal concepts for a supervising lawyer or supervising paralegal.


• Attends client meetings, coordination meetings, and legal proceedings with a supervising lawyer or supervising paralegal.


• Provides legal project management for a legal matter for a supervising lawyer or supervising paralegal.


• Supervises Project Assistants, Paralegals and Senior Paralegals on assigned tasks.


• Maintains notary license in local jurisdiction.


• Follows all supervising lawyer or supervising paralegal instructions.

OTHER DUTIES AND RESPONSIBILITIES:

• Maintains accurate and appropriate time records regarding hours spent working for clients, working for the Firm, and working on administrative tasks.


• Meets all time entry and timesheet deadlines specified by the Firm, the Paralegal Department, and the Accounting Department.


• Bills a minimum of 1,536 creditable hours each performance evaluation year that begins April 1 and ends March 31 of which a minimum of 1,416 of those hours are client billable hours.


• Limits approved pro bono hours and approved firm representation hours to a maximum of 120 total hours during each performance evaluation year.


• Works a predictable schedule, and also provides flexibility in daily schedule to meet Firm’s needs during periods of heavy workload.


• Timely notifies both supervising lawyers, supervising paralegals, and the Paralegal Manager of any time out of the office during normal work hours.


• Reports the receipt of non-billable work to the Paralegal Manager upon receipt.


• Avoids overtime for non-billable assignments.


• Contacts supervising lawyers, supervising paralegals and Paralegal Manager when available for new assignments.


• Accepts accountability and responsibility for all work assignments.


• Adheres to The National Federation of Paralegal Associations, Inc.’s “Model Code of Ethics and Professional Responsibility.”


• Attends relevant legal education to continuously improve legal skills.

EDUCATION & EXPERIENCE:

Bachelor’s degree or Paralegal Certification from ABA approved program required.

In lieu of degree, 13+ years of experience required.

MINIMUM QUALIFICATIONS:

Knowledge/Skills/Abilities:

• Excellent verbal and written communication skills.


• Understanding of legal processes and practice-group specific procedures.


• Excellent interpersonal, team, and customer service skills.


• Excellent attention to detail.


• Excellent organizational and time management skills with a proven ability to meet deadlines.


• Strong analytical and problem-solving skills.


• Ability to function well in a high-paced, and at times, stressful environment.


• Ability to maintain confidentiality, and to exercise discretion and good judgment.


• Proficient with Microsoft Office Suite and practice-group specific software.