Knobbe Martens Olson & Bear LLP - Orange County Open Positions

Job Title: Trademark Paralegal

Supervisor’s Title: Designated Partner, Paralegal Administrator

Status: Non-Exempt

Location: Orange County - this position depends upon the ability of the employee to work closely with attorneys and staff members during regularly scheduled hours.

General: Under direction, assist attorneys in the preparation and prosecution of U.S. and foreign trademark cases. This position requires the ability to work overtime which often cannot be predicted in advance.

Responsibilities and Duties:

1. Assist attorneys in the maintenance of U.S. trademark and copyright cases including prosecution of applications.

1.1. Conduct computer research including Saegis and Lexis/Nexis searches. Assist with investigation of third party use of marks. Prepare initial search opinion letters.

1.2. Prepare and file trademark, service mark and copyright applications.

1.3. Prepare and assist with filing responses to office actions, ?8 & 15 affidavits, assignments and renewal applications.

1.4. Prepare cease and desist letters.

1.5. Prepare charts and reports outlining the status of domestic trademark and copyright protection. Create and customize new reports and charts that outline client trademark protection.

1.6. Review Thomson & Thomson watching service reports for assigned clients, send reports to client and follow up with attorneys regarding the filing of oppositions.

1.7. Prepare and file all documents in connection with oppositions and cancellation actions.

1.8. Assist with the preparation of documents to be produced with the preparation of answers to discovery requests.

2. Assist attorneys in the maintenance of foreign trademark and copyright cases including prosecution of applications and oppositions.

2.1. Prepare foreign filing instruction letters.

2.2. Verify foreign filing requirements and oversee the timely filing of formal documents.

2.3. Review and analyze correspondence from foreign associates, and communicate with attorneys and clients throughout the entire prosecution of an application as well as during the maintenance of the foreign registration.

2.4. Prepare registered user agreements, assignments and license agreements, and follow-up regarding user requirements.

2.5. Review international watching service reports for assigned clients, send reports to client and follow up with attorneys regarding the filing of oppositions.

2.6. Prepare letters to foreign associates instructing the filing of opposition or cancellation proceedings.

2.7. Compile and prepare evidence in support of pending opposition/cancellation proceedings including advertisements, invoices, declarations, affidavits, etc.

2.8. Prepare charts and reports outlining the status of foreign trademark and copyright protection, including world-at-a-glance reports, status reports, etc. Create and customize new reports and charts that outline protection for client.

2.9. Research and assist attorneys with trademark assignments and name/address change recordals in foreign countries. Follow-up with assignments/recordals until completed.

3. Provide typical support functions.

3.1. Oversee the maintenance of the Chrono and Skeletal files kept for all opposition/cancellation cases.

3.2. Ensure that files are generated and opened in Carpe Diem.

3.3. Maintain client files by ensuring that changes are made in the file, docketing system and Carpe Diem as needed.

3.4. Other tasks as assigned by supervisor.

4. Manage Carpe Diem.

4.1. Ensure that billable hours are input correctly into the system in a timely manner. Ensure that quota hours are logged properly.

4.2. Ensure that WIPS and billing drafts are reviewed and that necessary changes are correctly entered in a timely manner.

Required Knowledge, Skills & Abilities:

1. Ability to communicate effectively in writing as well as verbally.

2. Ability to take initiative and handle responsibility.

3. Ability to analyze, organize and prioritize case information.

4. Ability to use Word to create and update documents.

5. Ability to accurately type 45 wpm.

6. Must be able to lift and carry up to 15 pounds.

Education and Experience:

A Bachelors degree is required along with either a paralegal certificate or a minimum of one year of experience under the supervision of a trademark attorney, and a written declaration from this attorney stating that the person is qualified to perform paralegal tasks. Courses in business and communication are recommended.

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