DFM & Associates LLC
Intellectual Property/Trademark Paralegal
DFM & Associates LLC, Dallas, Texas, United States, 75215
Global, high-profile, law firm is seeking an experienced Intellectual Property/Trademark Paralegal for their Dallas office in Uptown. This paralegal supports 3 attorneys in Dallas and will assist other offices, as well. This position is in the Firm's Technology and Life Sciences Practice Group. Must have attention to detail, ability to work independently, deadline oriented, proactive, and strong communication skills. The Paralegal must be comfortable doing substantive work and managing a case. Also, the Paralegal will work on exciting, high-profile, and relevant trademarks for large, international clients!
Duties & Responsibilities
Manage domestic and foreign prosecution for multiple clients, including drafting trademark/service mark applications, affidavits of use, maintenance and renewal documentation and correspondence to clients.Draft responses to office actions issued by the USPTO.Communicate with and manage foreign trademark counsel and agents regarding registration, maintenance and enforcement matters.Monitor and maintain trademark docket for due dates for responses, maintenance filings, renewals, oppositions, cancellations and office actions.Order and analyze trademark searches and assist attorneys in compiling results from searches to provide clearance analysis.Conduct in-house trademark searches and assist attorneys in compiling results from searches to provide clearance analysis.Handle all types of filings at the USPTO and Trademark Trial and Appeal Board in order to prosecute, maintain, and enforce trademarks.Assist attorneys in preparing cost estimates for trademark clearances, prosecution, recordation with the USPTO and Copyright Office, and maintenance.Perform due diligence ownership searches on trademarks, copyrights, and domain names in connection with corporate and finance transactions, including analyzing chain of title information and preparation of appropriate assignments, IP security agreements, and releases.Order file wrappers, copies of recorded assignments and security interests, and title documents recorded at government offices.Review executed IP assignments to ensure they are properly executed, notarized, stamped, witnessed, etc.Prepare recordation cover sheets or electronic fillings for documents to be recorded at USPTO or Copyright office.Arrange for legalization (by consulate or Apostille) of assignments for recording foreign trademark and patent offices.Prepare draft cease and desist demands and required follow-up.Review trademark watch notices, conduct initial investigation of potentially problematic references, and assist with resulting enforcement actions.Prepare draft of UDRP complaints and assist with filling and associated actions.Prepare draft copyright applications and assist with filing with Copyright Office.Prepare draft DMCA take down requests.Mentor and train junior Paralegals as appropriate.Perform other work related duties as assigned or as judgment or necessity dictates.
Qualifications
Minimum 5 years of focus on Intellectual Property/Trademark work, including knowledge of USPTO and TTAB rules and procedure.Familiarity with international trademark filing procedures and conducting due diligence reviews of Intellectual Property.Adept in drafting correspondence and diligence memoranda, and preparing of worldwide assignments and recordings.
Other Skills & Abilities
Excellent research and communication skills.Strong analytical, problem solving, and organizational skills.The use of good judgment and good interpersonal communication skills.Works harmoniously and effectively with others as part of a team.A self-starter who desires to show ownership and commitment to the job.Exercises confidentiality and discretion.The Firm provides an exceptional benefit package along with beautiful offices in Dallas! The hours are 8:30-5:00 and also flexible to 9:00-5:30. Must be flexible with overtime depending upon the workload. Billable hours are 1650/year.Salary: Top salary offered will depend upon qualifications and other operational considerations.Employment Type: Full-Time
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Duties & Responsibilities
Manage domestic and foreign prosecution for multiple clients, including drafting trademark/service mark applications, affidavits of use, maintenance and renewal documentation and correspondence to clients.Draft responses to office actions issued by the USPTO.Communicate with and manage foreign trademark counsel and agents regarding registration, maintenance and enforcement matters.Monitor and maintain trademark docket for due dates for responses, maintenance filings, renewals, oppositions, cancellations and office actions.Order and analyze trademark searches and assist attorneys in compiling results from searches to provide clearance analysis.Conduct in-house trademark searches and assist attorneys in compiling results from searches to provide clearance analysis.Handle all types of filings at the USPTO and Trademark Trial and Appeal Board in order to prosecute, maintain, and enforce trademarks.Assist attorneys in preparing cost estimates for trademark clearances, prosecution, recordation with the USPTO and Copyright Office, and maintenance.Perform due diligence ownership searches on trademarks, copyrights, and domain names in connection with corporate and finance transactions, including analyzing chain of title information and preparation of appropriate assignments, IP security agreements, and releases.Order file wrappers, copies of recorded assignments and security interests, and title documents recorded at government offices.Review executed IP assignments to ensure they are properly executed, notarized, stamped, witnessed, etc.Prepare recordation cover sheets or electronic fillings for documents to be recorded at USPTO or Copyright office.Arrange for legalization (by consulate or Apostille) of assignments for recording foreign trademark and patent offices.Prepare draft cease and desist demands and required follow-up.Review trademark watch notices, conduct initial investigation of potentially problematic references, and assist with resulting enforcement actions.Prepare draft of UDRP complaints and assist with filling and associated actions.Prepare draft copyright applications and assist with filing with Copyright Office.Prepare draft DMCA take down requests.Mentor and train junior Paralegals as appropriate.Perform other work related duties as assigned or as judgment or necessity dictates.
Qualifications
Minimum 5 years of focus on Intellectual Property/Trademark work, including knowledge of USPTO and TTAB rules and procedure.Familiarity with international trademark filing procedures and conducting due diligence reviews of Intellectual Property.Adept in drafting correspondence and diligence memoranda, and preparing of worldwide assignments and recordings.
Other Skills & Abilities
Excellent research and communication skills.Strong analytical, problem solving, and organizational skills.The use of good judgment and good interpersonal communication skills.Works harmoniously and effectively with others as part of a team.A self-starter who desires to show ownership and commitment to the job.Exercises confidentiality and discretion.The Firm provides an exceptional benefit package along with beautiful offices in Dallas! The hours are 8:30-5:00 and also flexible to 9:00-5:30. Must be flexible with overtime depending upon the workload. Billable hours are 1650/year.Salary: Top salary offered will depend upon qualifications and other operational considerations.Employment Type: Full-Time
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