Trademark Specialist
Location: New York, New York
Description: Dickstein Shapiro LLP is at the momment seeking for Trademark Specialist right now, this occupation will be designated in New York. More complete informations about this occupation opportunity please give attention to these descriptions. Dickstein Shapiro LLP, a reputable law firm with offices in Washington, DC, New York, NY, Stamford, CT, Los Angeles, CA, Orange County, CA and Silicon Valley, CA! , with more than 50 years of service, currently seeks a Trademark Specialist in either the Stamford, CT office or New York, NY office. The Trademark Specialist will perform at an advanced level of expertise and is able to assist the attorneys in complex matters. Reporting to the Paralegal Manager, the Trademark Specialist will also exercise significant independent judgment and discretion under the ultimate direction and supervision of attorneys.
ESSENTIAL FUNCTIONS:
- Review watch notices and analyze cited references for potential conflict.
- Review trademark search reports and analyze cited references for potential conflict; draft availability letters.
- Draft notices of opposition, discovery requests, and motions for extensions of time for submission to Trademark Trial and Appeal Board.
- Research and analyze law sources to prepare drafts of memos for review, approval, and use by attorneys.
- Litigation preparation an! d support; track deadlines for litigation matters, coordinate ! discovery schedules and assist attorneys with strategy.
- Review documents produced in Trademark Trial and Appeal Board cases and identify relevant information and materials for use in proceedings.
- Preparation and prosecution of U.S. and foreign trademark applications, including drafting responses to procedural and substantive office actions.
- Regular contact with clients regarding trademark prosecution, maintenance, and potential infringement issues.
- Instruct third party investigations, review results of investigations and evaluate same to determine appropriate course(s) of action.
- Draft complaints and decisions regarding domain name disputes for submission to WIPO in accordance with UDRP.
- Analyze trademark use and provide recommendations regarding advertising, packaging, and marking.
- Draft cease and desist letters regarding trademark and domain name infringements.
- Work directly with client legal and mark! eting personnel to develop and execute branding strategies.
- Monitor worldwide developments in trademark law and prepare summaries regarding relevant issues.
- Manage U.S. and Foreign trademark dockets and work with attorneys to handle deadlines.
- Prepare client letters for deadlines and PTO correspondence and documents.
- Perform at an advanced level of expertise in the area of trademarks and serve as a senior resources to attorneys and clients on trademark matters.
- Assist with due diligence by reviewing trademark and copyright files and conducting searches to verify information and disclose issues, such as liens or gaps in the chain of title.
- Conduct preliminary trademark searches in U.S., including design searches, using the USPTO database and proprietary search databases.
- Conduct trademark status searches using international Intellectual Property Office databases.
- Review specimens to determine if acceptab! le for U.S. Statements of Use, Sections 8 and 15 Affidavits and renewal! s after electronic conversion and formatting of specimens to meet USPTO requirements for electronic filing.
- Prepare and review trademark applications and coordinate efforts with outside trademark counsel.
- Prepare and file intent to use, use-based, Section 44d, Section 44e and Section 66a applications after electronic conversion and formatting of trademark drawings and specimens to meet USPTO requirements for electronic filing.
- Prepare and file extensions to file statements of use, statements of use, petitions to revive, preliminary amendments and routine Responses to Office Actions.
- Prepare and file maintenance affidavits and renewals.
- Prepare and file requests to record changes in title, including assignments, mergers and name changes.
- Correspond with foreign associates to file new trademark applications.
- Correspond with foreign associates and PTO examiners on deadlines and prosecution of pending applications.
- Respond to U.S. Patent and Trademark Office communication relating to applications in order to obtain trademark protection for clients.
- Communicate with clients to obtain information for filing applications, statements of use, and maintenance documents, and instructions for responding to PTO correspondence.
- Prepare and file extensions to oppose stipulated and consented motions with the Trademark Trial and Appeal Board.
- Report to work on a regular basis.
- Attend periodic Paralegal Department and group meetings.
- Comply with standard hours requirement applicable to position.
- Comply with mandatory annual paralegal department training requirement.
- Adhere to all administrative policies relating to entry of billable time, submission of payroll timesheets, and submission of leave requests.
- Provide assistance in other areas of Paralegal Department, as re! quired.
- May be asked to perform additional duties not listed i! n the job description, as required by business needs.
Interested applicants should submit resumes directly to the Firm’s Careers page at www.dicksteinshapiro.com/careers.
We are proud to be an AA/EOE. M/F/D/V.
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If you were eligible to this occupation, please deliver us your resume, with salary requirements and a resume to Dickstein Shapiro LLP.
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This occupation starts available on: Sun, 11 Aug 2013 10:00:11 GMT
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