Trade Mark Paralegal

Overview

The services provided by our Brands group embrace the full life cycle of a brand, from creation through to protection and enforcement. We are experts in trade mark and design filing, but we go beyond this to add value to our clients by playing a strategic advisory role – finding the right legal strategy to fit their commercial strategy.

Responsibilities

• Assist with, and prepare estimates for, pre‑filing searches.
• Prepare estimates for trade mark filings.
• Liaise with local attorneys over foreign filing and priority requirements.
• Prepare and file trade mark applications.
• Monitor status of applications in electronic diary and proactively engage with local attorneys.
• Respond to objections and prepare and file extensions of time and reports of publication and registration as required.
• Review and interpret all correspondence for relevant deadlines and add/review appropriate deadlines and reminders.
• Actively manage the diary and all deadlines on assigned matters.
• Prepare reports of opposition/cancellation timetable, and cooling off/suspension requests.
• File oppositions, and assist in obtaining advice from overseas agents.
• Support collation of evidence of use, and evidence of registration in other jurisdictions.
• Proactively review diary and prepare and send renewal reminders.
• Record registrable transactions at UK and EUIPO.
• Assist with watching and searching.
• Correspond directly with agents and clients, and work closely with team members to manage their correspondence.
• Update client trade mark reports.
• Assist with administration within practice as required.

Qualifications

• Minimum of three years’ experience as a trade mark paralegal.
• Ability to carry out all aspects of trade mark and design formalities work accurately.
• Excellent interpersonal and communication skills, with the ability to build strong relationships externally and internally across the firm.
• Ability to stay calm and work well under pressure.
• Ability to prioritise workload and demonstrate flexibility when required.
• Detailed working knowledge of trade mark application processes in UKIPO, EUIPO and WIPO.
• Excellent attention to detail and diligent management of deadlines.
• Ability to work independently without supervision, as well as being able to work as part of a close team.
• Flexible and proactive approach with a can-do attitude.
• CITMA paralegal qualification desired.
• Thorough knowledge of working with a trade mark database required.
• Knowledge of Darts and Saegis desired.

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