Dickstein Shapiro LLP/New York, NY

Dickstein Shapiro LLP, a Market Leading Specialty Firm&S480;, is currently looking for a Trademark Paralegal - Specialist (“Trademark Specialist”) in its New York City office. The Trademark Specialist is responsible for performing at an advanced level of expertise in the Intellectual Property practice group and is able to assist the attorneys in complex matters. The Trademark Specialist exercises a significant level of independent judgment and discretion under the ultimate direction and supervision of attorneys.

The Trademark Specialist is responsible for handling a daily trademark docket, including preparing and sending maintenance notices and reminders; updating electronic docketing system; preparing and filing all U.S. required filings, including applications, Sections 8, 9, 15 affidavits, International applications, office action responses, amendments of use and extensions ; preparing and filing foreign applications and required documents, including Section 44, 71, 66, community trademark applications; and communicating with and reporting filings to foreign associates and clients.

The Trademark Specialist is also responsible for preparing first draft office action responses for review, including issue spotting; reviewing watch notices and preparing first draft reports for review; preliminary clearance searches and preparing summaries for review; formal clearance searches and preparing first draft opinions for review; and U.S. and worldwide trademark ownership/registration searches through vendors and search engines and preparing results summary/reports.

The Trademark Specialist is also responsible for preparing and filing TTAB submissions, including opposition and cancellation notices and responses, discovery requests, and extensions of time; litigation support, including tracking deadlines for litigation matters, court filings, finalizing exhibits and filings, and coordinating discovery and litigation schedules.

The Trademark Specialist is responsible for working independently to research and analyze law sources to prepare drafts of memos for review, approval and use by attorneys, as well as providing regular contact with clients regarding trademark prosecution, maintenance, and potential infringement issues. They must be extremely organized, self-starter who is able to handle multiple projects and tasks under required deadlines.

Candidates must have a Bachelor's degree or equivalent and at least 5+ years of advanced trademark paralegal experience. Additionally, candidates must have strong understanding and application of trademark laws and regulations, strong computer skills (Excel, Word, and Outlook), extensive experience with electronic docketing systems, and have extensive experience with online filings at USPTO. Candidates must also be able to work overtime or travel if/when needed.

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