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Trademark Paralegal

San Francisco, CA
KJM Staffing Solutions has a great opportunity for an experienced Trademark Prosecution Paralegal.  The successful candidate will have a Bachelor's Degree, Paralegal Certificate and 4+ years of trademark experience in a mid to large law firm setting. Must be Familiar with U.S. and worldwide trademark laws and procedures, including Madrid Protocol as well as familiar with TEAS electronic filing procedures and TTAB procedures.
Responsibilities will include:
  • Prepare and file trademark, service mark and copyright applications.
  • Prepare and assist with filing responses to office actions, 8 & 15 affidavits, assignments and renewal applications.
  • Review watching service reports for assigned clients; prepare and send report letters to clients.
  • Follow up with attorneys regarding the filing of oppositions.
  • Prepare and file all documents in connection with oppositions and cancellation actions.
  • Assist attorneys with TTAB filings.
  • Conduct and analyze computer research and domestic trademark searches.
  • Assist with investigation of third party use of marks.
  • Assist with registration and maintenance of domain name portfolio.
  • Prepare and file assignments in connection with business acquisitions.
  • Assist attorneys in the maintenance of foreign trademark matters including prosecution of applications and oppositions.
  • Prepare foreign filing instruction letters; verify foreign filing requirements and oversee the timely filing of formal documents.
  • Review and analyze correspondence from foreign associates.
  • Ccommunicate with attorneys and clients throughout the entire prosecution of an application as well as during the maintenance of the foreign registration.
  • Prepare letters to foreign associates instructing the filing of opposition or cancellation proceedings.
  • Research and assist attorneys with trademark assignments and name/address change recordals in foreign countries.
  • Docket all actions for portfolios handling to maintain accurate docketing records.
This role offers a generous compensation package, excellent benefits and a great work culture.

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