Winston & Strawn

Trademark Paralegal

San Francisco, CA POSITION OVERVIEW:
This position requires the ability to work in a fast-paced environment, conducting pre-screening trademark searches, assisting in preparation of U.S. trademark applications, statements of use, extensions, affidavits, and renewal applications. It entails assisting with the prosecution of global trademark portfolios for clients, including handling certain aspects of U.S. and foreign trademark prosecution and maintenance and corresponding with foreign associates.
Duties & Responsibilities:

• Responsible for working with trademark attorneys and other paralegals to maintain trademark prosecution files
• Conduct Patent and Trademark Office ('PTO') searches and follow up investigative research regarding potential trademark infringements
• Process and analyze all trademark related mail and docket of U.S. and foreign trademark deadlines
• Assist in executing electronic and paper trademark filings with the PTO
• Correspond with foreign trademark counsel, and coordinate the legalization of documents for foreign jurisdictions
• Assist attorneys with trademark due diligence and other tasks related to mergers, acquisitions, trademark licensing and other transactional matters
• Complete various administrative tasks, such as the daily entry of time into the Firm's billing system
• Assist clients in maintaining and managing trademark files; including updating database for trademarks, copyrights and domain name matters; generate and edit status reports for clients
• Communicate with attorneys and clients regarding upcoming deadlines
• Execute assignments, changes of name and/or address as necessary
• Assist attorneys and other firm paralegals with due diligence, including electronically filing Trademark and Copyright Security Agreements and Releases
• Oversee, organize, and maintain electronic files relating to domain name and trademark portfolios, including electronically saving email correspondence
• Review incoming correspondence, including paper and emails, and take necessary action

QUALIFICATIONS: Must be specifically listed on resume in order to be considered for this position.

• Bachelor's degree and/or ABA Approved Paralegal Certificate required
• Five plus years of experience as a Trademark prosecution paralegal required

COMPETENCIES:

• Follow the ethical requirements as set forth by the Rules of Professional Conduct of the State and California Business & Professions Code, Section 6450 et. seq
• Knowledge of Patent and Trademark Office trademark rules and procedures
• Knowledge of PATTSY, CPI or similar trademark docketing system
• Familiarity with Coresearch, SAEGIS or similar trademark screening search tools
• Knowledge and understanding of legal principles and practices
• Ability to work independently or as a team.Assumes responsibility for self and team, Anticipates needs, acts independently and asks questions of supervisors as needed
• Ability to handle confidential and sensitive information with appropriate discretion
• Strong organizational, problem solving, and time management skills
• Ability to handle numerous tasks simultaneously, excellent attention to detail and ability to maintain and organize large volumes of data and documents
• Strong oral and written communications skills
• Display tact and good judgment
• Strong working knowledge of MS Word, Excel, and Adobe Acrobat. Familiarity with PowerPoint a plus
• Ability to supervise or take direction as needed
• Work may periodically require working more than 35 hours per week to perform the essential duties of the position; may also require irregular hours from time to time
• Ability to operate standard office equipment such as computers, laptops, photocopiers, printers, etc
• Ability to lift, carry, push, or pull materials weighing up to 15 pounds, and ability to retrieve and replace objects from shelves of up to 8 feet high
• Ability to travel to private and public buildings, locally and nationwide, via private or public conveyance to assist attorney in attending to client needs on legal matters

Clearance of firm standard background checks is required. ? WE VALUE DIVERSITY IN THE WORKPLACE. EOE/Minorities/Females/Vets/Disabled (EOE=Equal Opportunity Employer)
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