Job Description

*The ideal candidate would be located near the Research Triangle Park, NC area.*

Introduction to Company

Novalaw is a support organization, professionally running the back-office operations of a tech-enabled, highly selective, global law firm consistently recognized for its excellence, innovation, and teamwork throughout its 45 offices in 14 countries and five continents. This disruptive business model has widely become known amongst the most innovative in the legal industry prioritizing collaboration, dynamic innovation, consistent excellence, agility, and efficiency. These core principles provide our firm with an insightful understanding of how we can continue to push our growth year over year.

Position Summary

The Trademark Paralegal will operate as part of a team of attorneys and staff to provide a high level of service to our clients. The Trademark Paralegal will assist, under the supervision of attorneys, in the preparation, filing, and prosecution, of US and foreign trademark applications. The ideal candidate would be familiar with USPTO trademark filings as well as have trademark prosecution experience working with foreign associates.

Job Duties/Responsibilities

• Assist attorneys with both U.S. and foreign trademark prosecution matters.
• Draft trademark applications, draft basic office action responses, post-registration renewal documents, and other documents for filing with the USPTO.
• Search the USPTO trademark-related databases.
• Electronically file trademark applications and other documents with the USPTO.
• File Madrid Protocol applications, related prosecution, and maintenance documents.
• Review and choose suitable specimens of use for both goods and services, and format specimens for use in electronic filings at the USPTO.
• Draft and coordinate execution of Assignments and other formal documents.
• Develop strong working relationships with clients and foreign associates and coordinate communication with both.
• Maintain trademark docket and prepare reports as needed.
• Monitor and manage payment of trademark renewals.
• Perform preliminary trademark clearance searches, perform first level review of full trademark searches, perform internet searches for common law use of marks, and assist on due diligence reviews.

Required Skills/Abilities

• Familiarity with searching and locating information in the TMEP regarding USPTO trademark procedures and practices
• Familiarity with TTAB procedures and databases
• Proficiency in MS Word, Outlook, Excel, and PowerPoint
• Familiarity with procedures for billable time in time tracking program
• Familiarity with electronic document management systems, iManage a plus
• Ability to work independently in a remote setting
• Good planning, prioritization, and organizational skills, including attention to detail
• Ability to problem solve and use sound judgment in dealing with highly confidential information
• Excellent interpersonal, verbal, and written communication skills

Education/Experience

• 5 -7 years of experience handling all aspects of preparing and filing US and foreign trademark applications, office action responses, and related prosecution documents.
• Some experience with copyrights and domain names helpful. Patent prosecution experience a plus.
• College degree preferred, paralegal certificate helpful.

*The ideal candidate would be located near the Research Triangle Park, NC area.*

Job Related Competencies

• Attention to Detail
• Accountability
• Customer Oriented
• Collaboration
• Communication
• Consistent Excellence
• Efficiency
• Initiative

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