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The Trademark Paralegal will provide hands-on paralegal support to attorneys in the Firm’s Trademark Team, with a focus on USPTO and international trademark filings, trademark docketing, client reports and correspondence, domestic and international portfolio coordination, and similar tasks. The Trademark Paralegal can work out of either of AGG’s Atlanta or Washington, D.C. offices, or may also be full-time remote in appropriate situations. The Trademark Paralegal will be supported by one or more IP Clerks.
Position Reports to: Human Resources Manager, Head of Trademarks, Chair of Intellectual Property Practice Team, and Litigation Practice Group Leaders
Overall Responsibilities:
Primary duties will include, but are not limited, to the following:
- Prepare and file documents with USPTO, including applications, statements of use, extensions, amendments to allege use, Section 8 & 15 declarations, TTAB pleadings, and other filings
- Coordinate and prioritize daily workflow and deadlines in docketing system
- Review and docket all U.S. and foreign trademark filing developments and correspondence
- Review and docket non-litigation dispute matters
- Proactively communicate and coordinate worldwide trademark filings and deadlines with foreign associates
- Obtain formalities documents from foreign associates and coordinate securing signatures from clients
- Coordinate authentication, notarization and legalization of documents
- Occasional TMEP and TBMP legal research in order to respond to notices from the USPTO
- Preparation support of trademark attorneys with many aspects of U.S. and foreign trademark prosecution
- Daily verbal and written communication with clients and foreign associates
- Overtime may be required on occasion.
- Other duties/tasks related to the role as assigned
Required Skills & Education:
- Four or more years trademark paralegal experience in a law firm setting with strong familiarity with USPTO practice and developments
- Experience with trademark docketing systems; experience with WebTMS or other cloud-based docketing system strongly preferred
- Must be proficient in Microsoft Office Suite
- Highly detailed in all aspects of work, including e-filing and deadline tracking through completion of a task
- Strong work ethic, reliable, dependable. Must be able to take ownership of a task through completion with minimal oversight.
- Strict adherence to firm processes, policies and procedures
- Communicates with clients and assists responsible attorney in evaluating and analyzing needs relating to standard trademark practice
- Must be able to work independently and as a member of a team with limited supervision
- Must possess excellent customer service and communication skills
- A Bachelor’s Degree and/or ABA approved paralegal certificate highly desired
Mental/Physical/Environmental Requirements
- Position is eligible for hybrid and full remote working.
- Indoor offices with controlled temperatures with limited exposure to noise, dust, chemicals.
- Mobility within the office including movement from floor to floor.
- May sit for long periods of time.
- Crouching, kneeling standing, walking, pushing pulling and lifting occasionally
- Operating a personal computer, telephone, voicemail and other office equipment on a regular basis.
- Must be able to express and exchange ideas by means of the spoken word.
- Must have the ability to convey detailed information in a clear and concise manner through spoken word.
- Must demonstrate good problem-solving skills.
Hours
Full-time; Monday – Friday, 9:00 a.m. – 5:30 p.m. with 1 hour for lunch
Overtime and flexibility may be required
Salary Range
$100k to $130k annual
FLSA Status
Non-Exempt
ADA: The employer will make reasonable accommodations in compliance with the Americans with Disabilities Act of 1990.
This job description will be reviewed periodically as duties and responsibilities change with business necessity. Essential and marginal job functions are subject to modification.
Salary- $100,000 - $130,000/year
