Paralegal Property Law

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.

Department

Paralegal

Location

Ann Arbor, MI

Primary Responsibilities

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.

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.

Prepare and file trademark documents with WIPO, including applications for International Registration, responses to Notices of Irregularity, renewals, assignments, and powers of attorney.

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.

Prepare and record ownership and change of name documents related to trademarks.

Assist with trademark enforcement matters, including working with and corresponding foreign counsel regarding potential oppositions, cancellations, and cease & desist letters.

Conduct online research relating to trademark, copyright, and advertising matters; domain name disputes; and unfair competition.

Support with trademark disputes, including oppositions and infringement claims.

Assist with the management of trademark portfolios, including tracking deadlines and renewals.

Maintain professional and confidential client communications.

Qualifications

Bachelor’s degree, preferably in Social Sciences, Pre-Law, English, or a related field.

Minimum of 3 years of direct experience filing with the Trademark division of the USPTO.

Working knowledge of intellectual property and corporate law, including security interests in IP.

Experience with filing and searching for information in the USPTO and the U.S. Copyright Office.

Strong writing and communication skills, with the ability to draft clear, concise correspondence.

Experience conducting online searches using major search engines and global trademark databases.

Excellent organizational skills with superb attention to detail.

Proficiency in Microsoft Word, Excel, and Access (including data entry and report generation).

Ability to work collaboratively and a commitment to continuous professional development.

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