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Trademark Paralegal

Help us shape the future.  Elevate is changing the way legal support services are delivered and we are looking for creative, innovative people who can help. If you are a client-focused professional who wants your ideas to make a difference, Elevate's team of highly regarded legal service experts could be the right fit for you.

Elevate is a next generation global legal service provider that ranked 53rd on the Inc. 5000 in 2016, a prestigious annual ranking of the fastest growing private companies. We help law firms and corporate legal departments with practical ways to improve efficiency, quality and outcomes.

At Elevate we live our core values:

We deliver - We are careful about the commitments we make to our customers and to each other. We do what we say we will.
We Innovate - We celebrate creativity. We challenge the status quo and continuously ask of ourselves, and each other how can we improve.
We care - We listen to our customers’ needs and help them solve their business problems. Our work is a positive influence on our personal lives and the lives of our families.

The legal industry is changing and Elevate’s team are already some of the most respected leaders in the sector as we continue to deliver cutting edge products and services in support of our clients. Elevate’s client and global energy and petrochemicals company is currently undergoing significant change across its legal and compliance functions as they react to the changing regulatory landscape. To support this change, Elevate is supporting them with temporary resource to work on a wide variety of projects.

As a Trademark Paralegal you will be working on the Trademark team, where they manage the company’s global trademark and domain portfolios, which includes prosecution, enforcement, and litigation.    

Specifically you will:

  • Prepare weekly docket records and other reports, as requested, (using Web TMS).
  • Create, update, and maintain docket records and electronic files for all trademark and copyright assets and trademark and copyright matters including prosecution, conflict, and Trademark Trial and Appeal Board (“TTAB”).
  • Prepare and send deadline reminders to stakeholders and attorney(s).
  • Correspond directly with stakeholders regarding routine phases of trademark prosecution and maintenance matters.
  • Prepare domestic trademark applications, renewals, extensions of time, affidavits of use, and all other documents related to the application and prosecution of domestic trademark applications.
  • Assist attorney(s) in the preparation of documentation in response to United States office action and oppositions.
  • Prepare and record trademark and copyright assets ownership and change of name documents and assignments.
  • Draft and Prepare Powers of Attorney.
  • Attend to the legalization of Powers of Attorney, and other documents required for foreign filings worldwide.
  • Maintain and assist with the prosecution of foreign trademark applications and registrations.
  • Assist with the prosecution of domestic and foreign opposition proceedings, cancellation proceedings, and investigations, including gathering evidence and relevant materials.
  • Conduct and review preliminary and full trademark clearance searches, and prepare and draft clearance memoranda.
  • Assist stakeholders on appropriate trademark and copyright markings, trademark practices, and procedures.
  • Draft Uniform Domain Name Dispute Resolution Policy (UDRP) complaints and additional submissions.
  • Draft cease and desist letters for review by attorney(s).
  • Draft trademark assets assignment agreements.
  • Draft trademark license assignment agreements.
  • Draft Take Down Requests pursuant to the Digital Millennium Copyright Act and various platforms Terms of Use/Service.

Experience and Skills: 

  • Minimum 8+ years intellectual property experience, namely trademark prosecution and enforcement (both U.S and international).  
  • Excellent analytical skills and attention to detail. 
  • Excellent interpersonal skills, ability to work independently and as a team; sense of humor and professionalism.
  • Excellent written and verbal communications skills. 
  • Expertise in trademark prosecution matters, including all aspects of trademark application filings and online search tools. 
  • Ability to use a wide range of business software generally and other online tools to complete work assignments. 
  • Experience with trademark docketing system. 
  • Outside law firm experience strongly preferred. 

Qualifications:

Must have either a BA or BS or a paralegal certificate from an ABA-approved school.

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