Trade Mark Paralegal

The Team

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.

Duties And Responsibilities

Pre-Filing

• Assist with, and prepare estimates for, pre-filing searches.




• Prepare estimates for TM filings.




• Liaise with local attorneys over foreign filing and priority requirements.

Prosecution

• Preparing and filing trade mark applications.




• Monitor status of applications in electronic diary and pro-actively engage with local attorneys.




• Respond to objections and prepare and file Extensions of Time and reports of publication, Registration as required.

Deadline Management

• Review and interpret all correspondence for relevant deadlines and add/review appropriate deadlines and reminders.




• Actively manage the diary and all deadlines on assigned matter.

Disputes

• 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.

Renewals and Trade Mark Maintenance

• Proactively review diary and prepare and send renewal reminders.




• Record registrable transactions at UK and EUIPO.




• Assist with watching and searching.

General

• Correspond directly with agents and clients, and work closely with team members to manage their correspondence.




• Update client TM reports.




• Assist with administration within practice as required.

Skills/Experience

• 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/communication skills, with the ability to build strong relationships both 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.

Please note that this job profile is not an exhaustive list of duties but merely an outline of the key components of the role. You may be required by your line manager to take on additional responsibilities when requested.

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