Intellectual Property Paralegal

Founded in 1920, Akerman is recognized as one of the country’s premier law firms, with more than 700 lawyers in 25 offices throughout the United States.

Akerman is seeking an experienced Trademark Prosecution Paralegal. The location for this position is flexible. Akerman has adopted a hybrid work environment.

Preferred to have five or more years of experience as a trademark prosecution paralegal at a law firm directly handling large trademark portfolio prosecution tasks such as :

• Manage a full docket of trademark-related deadlines, send timely reminders to clients and attorneys, and ensure that deadlines are handled and collect information and instructions
• Prepare and file U.S. and Madrid trademark applications, declarations, renewals, extensions of time, and other USPTO filings
• Assist with preparation and filing of responses to trademark office actions
• Conduct in-house trademark screening searches on the TESS, SAEGIS, Corsearch, and WIPO Global Brand Database
• Record documents such as assignments, name changes, and lien releases with the USPTO and comprehend chain of title issues and ability to prefect same
• File documents with the TTAB and prepare non-substantive procedural filings
• Instruct and supervise trademark prosecution and trademark enforcement matters handled by foreign law firms and coordinate the preparation, execution, notarization, legalization, and apostille of documents filed with foreign patent and trademark offices
• Create customized trademark records reports for clients
• Support trademark due diligence for mergers and acquisitions

Skills & Competencies :

• Extensive knowledge of U.S. trademark rules and procedure; working knowledge of national laws of other countries; knowledge and familiarity with the Madrid Protocol and any deadlines set therein
• Must have a broad understanding of and to be able to independently use and / or file documents via WIPO IP Portal, TEAS, ETAS, TTABVUE
• Patent prosecution experience a plus
• High level of proficiency with technology including Microsoft Office Suite applications and internet research tools
• Strong organizational and time and deadline management skills
• Ability to work confidently and efficiently under pressure and tight deadlines
• Reliable and dependable team player who is able to adapt quickly to new surroundings
• Must be a good planner who is very detail-oriented and has the ability to organize and prioritize
• Candidate should be action and results-oriented; able to multi-task daily responsibilities
• Work independently, taking initiative to move projects to conclusion
• Ability to manage large client portfolios with numerous deadlines

We offer an excellent benefits and compensation package. Please submit your resume and salary requirements. EOE

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