Trademark Paralegal

$80,000 - $120,000/Yr

Frankfurt Kurnit Klein & Selz - New York, NY

posted 2 months ago

Full-time - Mid Level
New York, NY
Professional, Scientific, and Technical Services

About the position

Frankfurt Kurnit Klein & Selz, a well-respected law firm with over 40 years of experience, is seeking a Trademark Paralegal to join its Trademark and Brand Management Group. This position is based in New York City and offers a hybrid work environment. The firm is known for providing high-quality legal services across various industries, including entertainment, advertising, intellectual property, and technology. The Trademark Paralegal will play a crucial role in managing U.S. and foreign trademark filings and portfolios, ensuring compliance with trademark laws, and maintaining effective communication with clients and foreign counsel. The ideal candidate will possess a strong working knowledge of U.S. trademark laws and have at least five years of experience in a law firm or corporate setting. This role requires excellent organizational, analytical, and communication skills, as the paralegal will be responsible for preparing non-substantive Office action responses, managing trademark dockets, and assisting attorneys with TTAB filings. The Trademark group prides itself on a collegial atmosphere, where respect and consideration for one another are paramount. The firm has been recognized as one of New York's “Best Places to Work” by Crain's, reflecting its commitment to a positive work environment. In addition to the core responsibilities, the Trademark Paralegal will also assist with various non-prosecution trademark projects and other tasks as assigned. The firm values attention to detail and a commitment to excellence, making this an exciting opportunity for a dedicated professional looking to advance their career in trademark law.

Responsibilities

  • Coordinating and managing U.S. and foreign trademark filings/portfolios.
  • Preparation of non-substantive Office action responses and related correspondence for attorney review.
  • Communication with foreign counsel and clients.
  • Preparing and filing trademark applications and issuing foreign filing instructions.
  • Managing U.S. and foreign trademark dockets using the CPI docketing database.
  • Assisting attorneys with TTAB filings and docketing TTAB proceedings.
  • Assisting with other non-prosecution trademark projects from time to time.
  • Other responsibilities as assigned.

Requirements

  • Minimum of 5 years of experience as a Trademark Paralegal in a law firm or corporate setting.
  • Bachelor's degree and/or Paralegal certificate is preferred.
  • Experience with the USPTO search and trademark filing systems, and WIPO databases.
  • Experience with procedures and practices regarding application and registration of U.S. and foreign trademarks, with experience in more than one industry preferred.

Nice-to-haves

  • Proficiency with computerized trademark docket databases, CPI experience preferred but not required.
  • Familiarity with trademark filings under the Madrid protocol.
  • Excellent organizational, analytical and critical thinking skills.
  • Ability to effectively and professionally communicate with clients.
  • Exceptional drafting, proof-reading and communication skills.

Benefits

  • Medical insurance
  • Dental insurance
  • Vision care
  • Life insurance
  • Disability insurance
  • Commuter benefits
  • Flexible spending account
  • Retirement plans
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