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Company

Akerman LLP

Address Orlando, FL, United States
Employment type FULL_TIME
Salary
Category Law Practice
Expires 2023-08-12
Posted at 10 months ago
Job Description
Akerman LLP, a top 100 U.S. law firm with a reach that extends across the Americas and globally, is seeking an experienced Trademark Prosecution Paralegal. We are a client-driven enterprise, recognized by Financial Times as among the most forward thinking law firms in the industry. Assembling a hand-crafted team for every client engagement, we leverage our more than 700 lawyers and business professionals across 24 offices. The location for this position is flexible. Akerman has adopted a hybrid work environment.


Preferred


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


  • Assist with preparation and filing of responses to trademark office actions
  • File documents with the TTAB and prepare non-substantive procedural filings
  • Record documents such as assignments, name changes, and lien releases with the USPTO and comprehend chain of title issues and ability to prefect same
  • Prepare and file U.S. and Madrid trademark applications, declarations, renewals, extensions of time, and other USPTO 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
  • Support trademark due diligence for mergers and acquisitions
  • Create customized trademark records reports for clients
  • 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
  • Conduct in-house trademark screening searches on the TESS, SAEGIS, Corsearch, and WIPO Global Brand Database


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


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