Trademark Paralegal
Stoel Rives
Portland OR · Intellectual Property
Stoel Rives LLP has an immediate opening for a Trademark Paralegal in either our Portland, Sacramento, Salt Lake City or Seattle office. This position assists the attorneys and fellow paralegals (“practitioners”) in handling a variety of billable and operational projects or tasks related to trademark and copyright matters, depending upon the practitioner and client needs. This position receives daily supervision and assignments from practitioners in the practice group. ESSENTIAL FUNCTIONS/RESPONSIBILITIES Trademark Administration: The TIP Paralegal will receive assignments directly from the practitioners in the TIP department for the following tasks: All billable non-attorney tasks relating to U.S. trademark applications, Madrid Protocol applications, and foreign trademark applications; including but not limited to: application filings, extensions, statements of use, registration maintenance and renewal and recording assignments, security interests and releases. Assist with office action responses in the USPTO, WIPO and with foreign associates. Conduct trademark searches and prepare draft search reports. Assist with opposition and cancellation filings with the TTAB. Assist with UDRP filings with WIPO and other arbitrators. Assist with trademark litigation filings in federal and state courts. Work with docketing staff to maintain, revise and update trademark docket. Prepare copyright applications. Prepare and send client reminder correspondence and updates, work with clients to develop allegations of use and other factual information. Prepare and send foreign associate correspondence regarding new applications, responses, renewals, and recording assignments, security interests and releases. Provide and maintain electronic and paper files, as well as review and approval of all docketed deadlines. Assist with investigation, research, USPTO informational searches and internet searches, review documents, and summarize findings as directed. Assist attorneys with corporate due diligence including review of trademark portfolios, preparation and review of schedules, chain of title review and cleanup. Handle new client file intakes, and new counsel transfers. Docket Software Responsibilities Learn and maintain complete knowledge of the patent and trademark docketing software program (Foundation IP), train staff, assist practitioners in the use of the docket system, and maintain updated procedures requested by practitioners regarding implementation of firm docketing policies. Document Organization Photocopy, file, and search files for documents; prepare, index, and review documents for delivery, storage and destruction. Other duties as assigned. ESSENTIAL CAPABILITIES Must possess the following capabilities: strong oral and written communication, ability to learn, outstanding attention to detail, initiative, adaptability, dependability, flexibility, client service and teamwork orientation, ability to focus attention for long periods of time, and work withou
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