Trademark Paralegal resume samples

Trademark Paralegals are responsible for licensing activities and complete duties such as assisting processes for mergers and acquisitions, preparing files associated with business acquisitions, collaborating with various departments to make sure deadlines are met, preparing documents for attorneys, and getting involved in trademark-related projects. Successful resume samples for Trademark Paralegals showcase qualifications such as trademark rules knowledge, computer proficiency, problem-solving skills, effective communication, teamwork, and confidentiality. Those looking to work as Trademark Paralegals should be able to mention in their resumes Paralegal certification and an Associate's or Bachelor's Degree.


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1

Trademark Paralegal

Managed trademark prosecution portfolios and docket for three worldwide corporations

  • Managed client relationships & training on prosecution process, international growth strategy, anti-piracy
  • Conducted clearance searches for all incoming marks; drafted client reports and opinions for attorney review
  • Prepared & filed trademark applications, maintenance requirements, assignments, U.S.P.T.O Office Actions
  • Initiated trademark policing, investigations, global watches; handled investigations materials
  • Handled international trademark orders, budget negotiations; managed communications with foreign agents
CANDIDATE INFO
1
year in
workforce
1
year
at this job
BA
Legal Studies
MA
Management
2

Senior Trademark Paralegal & Intellectual Property Paralegal

  • Authored and implemented benchmarked best practices for IP docketing and e-billing to increase productivity and efficiency
  • Member of new software selection committee studied then presented several solutions for IP
  • Law firm convergence project that reduced outside counsel cost by 20%
  • Identified targets for patent and trademark licenses and technology transfer agreements lead the client engagement to draft the Licenses and Agreements
  • Repaired significant gaps in trademark rights; communicated a plan to repair said gaps to senior leadership; the plan received funding of $450K in a down economy
CANDIDATE INFO
6
years in
workforce
6
years
at this job
BA
Bachelor of Arts
MBA
Mba - Business Adminstration
3

Trademark Paralegal

Responsible for domestic and foreign trademark matters for the restaurant franchise businesses (Taco Bell, Pizza Hut, and KFC).

  • Conducted preliminary knock-out searches, ordered and reviewed clearance searches, coordinated investigations when needed, and prepared applications to register trademarks.
  • Coordinated clearance and filing of applications with international associates.
  • Maintained existing registrations and applications by filing the requisite documents with the U.S. Patent & Trademark Office.
  • Reviewed watch notices and alerted counsel to potential infringements.
CANDIDATE INFO
11
months in
workforce
11
months
at this job
C
Paralegal
BA
Psychology
Advertising
4

Senior Trademark Paralegal

  • Resolved a trademark infringement lawsuit in South Africa regarding ALMAY trademark, avoiding litigation fees that could have been between $1 million and $2 million US dollars.
  • Completed annual trademark renewal project through internal reporting, communication with outside counsel, and streamlining legalization of applicable documents to assist in the renewal process.
  • Streamlined the US trademark prosecution through filing documents electronically (i.e. filing via the United States Patent and Trademark Office Website).
  • Managed the Revlon portfolio of trademarks including domestic and foreign matters.
  • Provided support and guidance for Enforcement/Litigation/Oppositions/Cancellations Actions.
CANDIDATE INFO
17
years in
workforce
5
years
at this job
C
Paralegal Studies
BS
Organizational Behavior
5

Trademark Paralegal

Domestic trademark prosecution including electronic trademark filings.

  • Prepared and filed electronic copyright applications.
  • Performed trademark, corporation, and Internet domain name searches.
  • Supported six trademark attorneys and two copyright attorneys.
  • Reviewed and electronically file assignments, mergers and changes of name.
CANDIDATE INFO
8
years in
workforce
2
years
at this job
6

Trademark Paralegal / Supervisor

Gathered evidence of use and specimens to support prosecution.

  • Prepared and filed Section 9, Section 8 and Section 8 & 15 declarations, assignments, changes of name and mergers with the USPTO through its eTEA system.
  • Responded to routine Office Actions.
  • Maintained a computerized docket through IPPO WebTM system.
  • Supervised and delegated work to three legal assistants.
  • Drafted Assignment documents. Reviewed and approved invoices. Prepared reports for attorneys, foreign law firms and domestic clients.
  • Coordinated files transferred in and out of the firm. Assisted attorneys, paralegals and secretaries in other departments
CANDIDATE INFO
28
years in
workforce
24
years
at this job
Chemical Engineering/liberal Arts
7

Senior Trademark Paralegal

Supervised staff of six legal assistants responsible for securing, maintaining and enforcing global IP rights of high profile clients, such as, Major League Baseball and Bloomberg LP.

  • Managed filing of federal and state trademark applications, and pre and post-registration documents: Amendments to Allege Use, Statements of Use, Responses to Office Actions, Notices of Opposition, Section 8 & 15 Affidavits, Assignments and Renewal documents.
  • Directed efficient docketing of all deadlines and trademarks into Trademark management database.
  • Coordinated, instructed and corresponded with foreign counsel on new trademark filings, prosecution and maintenance matters in multiple international jurisdictions.
  • Effectively prepared key complex and/or confidential correspondence, reports, legal research, analyses, presentations, and legal documents to acquire, support and enforce clients' trademark registrations worldwide.
  • Engaged and guided staff to increase interpersonal communication, promote teamwork, reduce conflict and implement new operational concepts, resulting in a more integrated and optimally efficient office model.
  • Directed multiple processes and procedures certifying and legalizing legal documents in numerous foreign consulates, embassies and other governmental agencies.
CANDIDATE INFO
14
years in
workforce
3
years
at this job
HS
Paralegal Studies
AA
Liberal Arts / English
BA
Leadership
8

Trademark Paralegal

Supported attorneys in the Intellectual Property and trademark departments.

  • Prepared witness files, deposition exhibits and expert reports.
  • Maintained attorneys' dockets of upcoming deadlines.
  • Researched infringement issues and gave reports to attorneys.
  • Assisted with coordinating document production and document review.
  • Scheduled appointments, court appearances and depositions.
CANDIDATE INFO
5
years in
workforce
3
years
at this job
BA
Communications, Journalism
9

Trademark Paralegal

  • Reviewed USPTO and foreign trademark Bulletin to protect company assets.
  • Filed timely Trademark renewals and use maintenance for the US.
  • Supervised outside counsel internationally regarding trademark oppositions/litigation and renewal filings.
  • Managed trademark docketing tracking system and billing system.
  • Reduced outside counsel over-billing and duplicate billing by $1.2 million.
  • Redesigned trademark filing system both physically and electronically for 55,000 records.
CANDIDATE INFO
5
years in
workforce
5
years
at this job
C
Certificate
C
Certificate
AS
Associate of Science
10

Trademark Paralegal

  • Conducted Saegis availability search of potential trademarks for client and reported clearance results
  • Prepared Trademark Applications, Statements of Use, Extension Requests to file Statements of Use, Intent to Use Applications, Declarations of Use, Renewal Applications, Assignments and filed with the United States Patent and Trademark Office
  • Prepared response to Office Actions and filed with the United States Patent and Trademark Office
  • Reviewed products and service samples of trademark use and other information in support of trademark applications
  • Prepared correspondence for attorney review to advise clients of case status, maintained and updated trademark files
CANDIDATE INFO
12
years in
workforce
10
months
at this job
C
Certificate
BA
History And International Studies

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