TRADEMARK PARALEGAL

McCarter & English, LLP; Boston (MA); On-site; USD 80,000 - 118,000; Full time

Benefits offered by this job

Firm-Paid Life Insurance and AD&D

Short-Term & Long-Term Disability

Health & Wellness coverage

401(k) plan

PTO & Holidays

Parental leave

Employee assistance program

Job summary

McCarter & English, LLP seeks an IP/IT paralegal for our Boston office (also recruiting for New York and Newark). Three years of paralegal experience are required, with demonstrated involvement in domestic trademark prosecution and oppositions and coordinating foreign filings through foreign counsel.

The role requires trademark clearance searches, calendar management, and coordinating mail and communications.

Qualifications

• Three years of experience required.
• Experience in domestic trademark prosecution and oppositions, and managing foreign filings through foreign counsel.
• Ability to perform trademark clearance searches and to organize mail, correspondence and manage an active calendar.

Responsibilities

• Conduct clearance searches and review references for conflicts.
• Prepare and file trademark applications, amendments, statements of use, assignments, renewal applications, and other documents with USPTO and foreign offices.
• Manage and update the trademark docket and deadlines.
• Correspond with clients on matter status and inquiries.
• Support litigation and enforcement matters, including exhibits and discovery materials.

Skills

PowerPoint

Excel

MS Office

Communication

Docket management

Tools

CPI

SAEGIS

MS Office

Job description

McCarter & English, LLP is seeking an IP/IT paralegal for our New York, Boston, or Newark offices. Three years of experience required. Candidates must have experience in both domestic trademark prosecution and oppositions, as well as involvement in managing similar foreign filings through foreign counsel. Candidates must also have the ability to perform trademark clearance searches and to organize and coordinate mail, correspondence (internally and externally) and manage an active calendar. PowerPoint and Excel skills important. Salary for this position will range from $80,000-$118,000, depending on experience.

ESSENTIAL DUTIES AND RESPONSIBILITIES

• Conduct clearance searches using online databases, and review and analyze cited references for potential conflicts.
• Prepare and file trademark applications, amendments, statements of use, assignments, renewal applications, and other trademark-related documents with the United States Patent & Trademark Office (USPTO) and foreign trademark offices.
• Manage and update the trademark docket, including ensuring that all trademark-related deadlines are accurately recorded and monitored.
• Correspond with clients to report the status of active matters and to respond to client inquiries.
• Provide support in litigation and enforcement matters, including preparing exhibits and discovery materials, and conducting research as needed.
• Additional tasks as necessary in support of the department.

QUALIFICATIONS

• Strong computer skills; Computer Packages Inc. (CPI), SAEGIS, MS Office (Word, Excel, Outlook) experience required; database experience a plus.
• Highly motivated, pleasant individual with professional demeanor and appearance.
• Must be able to exercise independence and good judgment, think creatively to solve problems, and demonstrate excellent attention to detail.
• Excellent written and oral communication skills.
• Must maintain a high quality work product, have the ability to schedule work to meet department deadlines and be able to perform job responsibilities under pressure efficiently, productively and in a professional manner.

Benefits (if FTE requirements met):

• Firm-Paid: Basic life and accidental death and dismemberment (AD&D) insurance and short-term (ST) and long-term (LT) disability benefits.
• Health & Wellness: Comprehensive medical/prescription drug coverage (the Firm pays a share of the cost), including a high deductible health plan with an annual Firm health savings account (HSA) contribution.
• Employee-Paid Voluntary Benefits: Dental and vision coverage, supplemental health plans (accident, cancer and critical illness), flexible spending accounts, optional life and AD&D insurance (supplemental employee, spouse and child) and supplemental STD coverage.
• Retirement: 401(k) plan offering three types of contributions: pre-tax, Roth and after-tax contributions.
• Time Off: Paid Time Off (PTO), paid holidays, and leaves of absence to support work-life balance (e.g. parental leave)

Additional Benefits:

• Free and confidential employee assistance program (EAP) and behavioral health services program
• Firm-paid back-up child/elder care, academic support and pet care program
• Tax-advantaged college savings 529 Plan
• Employee discounts through Working Advantage

Other Compensation:

• Eligibility for discretionary bonus.

It is unlawful in Massachusetts to require or administer a lie detector test as a condition of employment or continued employment. An employer who violates this law shall be subject to criminal penalties and civil liability.

McCarter & English, LLP is an Equal Opportunity Employer