Trademark Paralegal

About Ropes & Gray

Ropes & Gray is a preeminent global law firm. The firm has been ranked in the top three on The American Lawyer's prestigious A-List for eight consecutive years and #1 on Law.com's UK A-List twice in the past three years—rankings that honor the "best of the best" law firms.

 

The firm has approximately 2,500 lawyers and professionals serving clients in major centers of business, finance, technology, and government in Boston, Chicago, Dublin, Hong Kong, London, Los Angeles, Milan, New York, Paris, San Francisco, Seoul, Shanghai, Silicon Valley, Singapore, Tokyo and Washington, D.C.

 

The firm has consistently been recognized for its leading practices in many areas, including asset management, private equity, M&A, finance, real estate, tax, antitrust, life sciences, health care, intellectual property, litigation & enforcement, privacy & cybersecurity, and business restructuring.

 

Ropes & Gray is an equal opportunity employer.

Overview

JOB SUMMARY:

The Trademark Paralegal is responsible for supporting and assisting internal and external clients on all assigned trademark, copyright and domain name prosecution matters worldwide.  The Trademark Paralegal is expected to have a comprehensive understanding of the filing requirements for U.S. and foreign trademark, copyright and domain name prosecution matters and be competent at preparing all associated documents.  The Trademark Paralegal is also expected to have a basic knowledge with respect to completing complex filings in the more obscure foreign countries.  The Trademark Paralegal proactively monitors and ensures that all assigned deadlines are timely met.  The Trademark Paralegal works closely with his/her supervisor, other department managers and supervisors and team members to provide consistent high-quality service to both internal and external clients.  The Trademark Paralegal provides back-up to team members, when necessary.

 

Responsibilities

ESSENTIAL FUNCTIONS:

Assists attorneys in preparing trademark documents for submission to the United States Patent and Trademark Office in connection with applications from initial filing up to and including post registration processing.  Assists in preparation of filings in connection with opposition and cancellation proceedings.

Provides instructions to foreign associates on new applications and on subsequent matters, including, but not limited to, responses to official actions, post registration maintenance, recordation of title changes and license agreements and filings in connection with opposition and cancellation proceedings.  Prepares, orders and legalizes documents as needed.

Assists attorneys on copyright and domain name matters, including, but not limited to, filing of new applications, renewals, and recording changes in title.  Assists in the preparation and filing of documents in connection with domain name dispute proceedings.

Assists on IP due diligence projects from conducting various trademark, patent, copyright and domain name searches to reviewing chain of title to preparing report-ready charts summarizing search results.

Performs or instructs trademark searches and assists in reviewing results.

Reviews incoming mail, reviews watch notices, processes invoices, quality assures docket and prepares reporting correspondence as required.

Monitors filing deadlines for all assigned matters, interprets the action to be taken and prioritizes work accordingly to ensure that all filing deadlines are met in a timely manner.  Provides on-going quality assurance of docket for assigned matters.

Assists with maintenance and on-going audit of digital files on assigned matters.

Assists other department staff with related trademark matters, including, but not limited to, client intake, transfer of matters, data audits, preparation of status and docket reports.  Provides team coverage, as required.

Ensures that all tasks carried out are compliant with the firm's policies, processes and procedures.

Keeps current with U.S. and foreign trademark practice rules and regulations.

Performs 1600 hours of billable work annually.

ESSENTIAL CAPABILITIES:

• Excellent communication, oral, written and interpersonal skills. 
• Able to maintain confidentiality in all client and firm matters. 
• Able to interact effectively with all levels of personnel. 
• Able to be flexible in order to respond quickly and positively to shifting demands and opportunities; able to work under tight deadlines and handle multiple, detailed tasks. 
• Excellent attention to detail and able to follow up and follow through. 
• Able to work in a collaborative teamwork environment and ability