Department:
Paralegal
Location:
Ann Arbor, MI
Description
Bodman PLC is seeking a Trademark Paralegal to join our Intellectual Property Practice Group. In this position you will work closely with members of Bodman’s Intellectual Property Team to provide high-quality service to our clients. We’re looking for a professional with strong critical thinking and project management skills, a strategic mindset, and meticulous attention to detail.
Primary Responsibilities
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Conduct trademark and IP-related searches using U.S. and foreign IP office databases (patent, trademark, copyright) to identify ownership, lienholders, and record relevant documents.
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Prepare and file U.S. trademark prosecution documents with the USPTO, including, applications, responses to office actions, statements of use, extension requests, requests to divide, and post-refusal submissions.
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Prepare and file trademark documents with WIPO, including applications for International Registration, responses to Notices of Irregularity, renewals, assignments, and powers of attorney.
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Coordinate with foreign counsel on the prosecution and maintenance of trademark applications/registrations outside of the United States, including attending to notarization and legalization of documents.
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Prepare and record ownership and change of name documents related to trademarks.
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Assist with trademark enforcement matters, including working with and corresponding foreign counsel regarding potential oppositions, cancellations, and cease & desist letters.
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Conduct online research relating to trademark, copyright, and advertising matters; domain name disputes; and unfair competition.
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Support with trademark disputes, including oppositions and infringement claims.
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Assist with the management of trademark portfolios, including tracking deadlines and renewals.
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Maintain professional and confidential client communications.
Qualifications
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Bachelor’s degree, preferably in Social Sciences, Pre-Law, English, or a related field.
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Minimum of 3 years of direct experience filing with the Trademark division of the USPTO.
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Working knowledge of intellectual property and corporate law, including security interests in IP.
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Experience with filing and searching for information in the USPTO and the U.S. Copyright Office.
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Strong writing and communication skills, with the ability to draft clear, concise correspondence.
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Experience conducting online searches using major search engines and global trademark databases.
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Excellent organizational skills with superb attention to detail.
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Proficiency in Microsoft Word, Excel, and Access (including data entry and report generation).
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Ability to work collaboratively and a commitment to continuous professional development.