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Trademark Paralegal Resume Samples
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0-5 years of experience
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
6-10 years of experience
- 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
0-5 years of experience
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.
0-5 years of experience
- 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.
0-5 years of experience
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.
10+ years of experience
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
0-5 years of experience
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.
0-5 years of experience
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.
0-5 years of experience
- 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.
0-5 years of experience
- 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
0-5 years of experience
Assisted owner/managing partner with all stages of federal and state trademark prosecution (foreign and domestic).
- Executed preliminary trademark searches, filed trademark applications, maintained registration of trademarks, prepared Responses to Office Actions, filed Section 8 & 5 affidavits.
- Prepared and filed copyright applications.
- Assisted in searching and registration of domain names and maintenance of same.
- Responsible for maintaining firm docketing.
- Accounting duties included maintaining billing system for all firm invoices, accounts payable/receivable, preparing expense reports and quarterly profit and loss statements.
0-5 years of experience
Conducted research and drafted legal documentation
- Organized and presented a US trademark lesson for prospective clients in Finland
- Prepared federal and state corporate filings
- Trademark searches and various aspects of trademark prosecution
- Managed and maintained client and case files
- Key contact to payroll, insurance agents, and other vendors
0-5 years of experience
Organized maintenance of domestic trademark registrations (including application papers, renewal documents, specimens, correspondence with clients and the US trademark office)
- Filed use publications and renewal applications for foreign trademark registrations (including renewal documents, online status research, correspondence with clients, foreign counsel, and foreign trademark offices)
- Prepared and filed domestic trademark applications
- Conducted daily IP review and ensured that all relevant due dates were met
0-5 years of experience
Conducted due diligence for Trademark, Patent, Copyright and Domain Name assets; cross-reference and prepare IP charts; check ownership and assignment status via USPTO, Library of Congress, WHOis databases and foreign IP databases.
- Assisted in all phases of domestic and international trademark prosecution and oppositions, managed portfolios for Unilever, Hugo Boss, Athlete’s Foot and Walt Disney.
- Drafted correspondence to clients regarding status of applications, registrations, and to seek instructions for upcoming deadlines.
- Managed IP docket system, docketed all incoming deadlines and prepared all docket reports.
- Maintained litigation docket; Familiar with TTAB procedures and filing of UDRP’s.
- Prepared trademark applications for electronic filing of new applications, Statements of Use, Sec. 8&15; Sec. 8&9; assignment programs, non-substantive Office Actions.
- Ordered all Thomson Compumark trademark searches, assisted in clearance process and processed vendor and foreign associate invoices.
- Assisted with legalization and global assignments for various portfolios; reviewing, evaluating and consulting with attorneys regarding correspondence from foreign counsel and drafting responses to same; gathering and providing foreign counsel with information/documentation necessary to prosecute/maintain trademark applications and registrations and respond to Office Actions.
10+ years of experience
Started as a legal assistant floater and progressed to a trademark paralegal after 15 months.
- Prioritize and multitask to ensure the coverage of the workload and deadlines of three partners.
- Work in a team of three paralegals to cover overflow and vacations to ensure quality coverage and no lapse in efficiency.
- Conduct trademark availability searches online and in databases to investigate whether trademarks are available for client use.
- Prepare detailed documents to be filed with the U.S. Patent and Trademark Office.
- Prepare correspondence to clients and foreign counsel regarding U.S. and foreign trademark applications and registrations.
- Maintain client relationships with large corporations, large universities and small companies through e-mail and telephone.
0-5 years of experience
- Prepared and filed new PCT International applications
- Prepared substantial correspondence to foreign associates pursuant to attorneys’ instructions with limited supervision while working in a team environment
- Prepared extensive client correspondence including formalities and status updates
- Reviewed trademark search reports from foreign associates
- Closely monitored docket reports, prepared status charts and provided attorneys with reminders regarding imminent deadlines to ensure that all due dates were met in a timely fashion
- Supervised and trained new employees in the foreign filing department
0-5 years of experience
- Assisted case teams with legal research, markman hearings, discovery, trial, and settlement
- Reviewed and identified information from patent file wrappers and lab notebooks to resolve patent priority disputes
- Analyzed product labeling, packaging and design to determine the existence of trademark infringement
0-5 years of experience
- Coordinated trademark applications, renewals and maintenance with outside counsel.
- Drafted and updated contracts for development, reseller and consulting agreements.
- Reviewed legal documents to ensure they meet company guidelines.
- Established and maintained contract database.
0-5 years of experience
Prepared and filed trademark documents with the USPTO, including new applications and maintenance filings such as declarations of use, renewals.
- Prepared and filed trademark opposition documents with the TTAB.
- Served as a liaison with ongoing clients regarding the maintenance of trademark and copyright portfolios.
- Assisted attorneys with trademark, copyright and domain name due diligence for potential transactions.
- Performed worldwide trademark screening searches.
- Served as a liaison with foreign associates regarding the maintenance of foreign trademark matters.
0-5 years of experience
Knowledge of CPI docket system and recorded due dates including responses, renewals, oppositions, Section 8 and 15 affidavits, Patent Cooperation Treaty requirements and payments of patent annuities in foreign countries.
- Reviewed and processed incoming IP mail, faxes and emails and entered all necessary deadlines into CPI.
- Responsible for reviewing, recording, and reporting assignments; responsible for U.S. prosecution including preparing and filing all PTO communications, but not limited to, new applications; Office Action Responses; Information Disclosure Statements; assignments and related ownership transfers and formal drawings.
- Conducted frequent docket reviews; distributed weekly and monthly reports; filed foreign and domestic patent applications for assigned clients; requested formal drawings and handling renewals and all necessary documentation.
- Tracked and ensured maintenance and renewal fees were paid.
0-5 years of experience
- Responsible for managing domestic and international trademark portfolio
- Duties included monitoring, filing, and meeting deadlines for trademark matters, taking action and prioritizing work accordingly
- Provided on-going quality assurance of docket for assigned matters
- Managed Small Claims case load of up to 100 cases
- Daily tasks consisted of legal research, communicated with outside counsel, assisted in the preparation of discovery responses, collected documents, negotiated settlements and generated case budget reports
- Provided administrative support to 5 attorneys, 3 paralegals and Vice President, General Counsel
- Handled highly confidential information, managed calendars and projects
- Organized files both electronic and paper, handled high volume of scanning legal and general office documents, and generated monthly accrual reports
- Processed all incoming invoices, included data entry, review of invoices, and worked closely with accounts payable to ensure payments
- Responsible for research and analyzed reports which directly impacted the annual savings of 2.5 million in litigation cost
0-5 years of experience
- Rapidly promoted to Paralegal to institute Post-Registration Trademark Paralegal Department, in conjunction with department co-chairs, to centralize domestic and international post-registration matters.
- Developed standardized procedures including billing and records control. Worked with IT to create template documents and reporting letters.
- Wrote documentation in spreadsheet format for efficient reference, including links to various sites.
- Within first year, U.S. post-registration docket was one-year ahead and International due dates six-months ahead.
- New hire (first job out of University, no IP experience) billing 100 hours first month.
6-10 years of experience
- Assisted in preparation and filing electronically U.S. trademark applications, Statements of Use, Extensions of Time to Oppose, Oppositions, Renewals, Section 8 & 15 Affidavits, Assignments and related documents with the U.S. Patent and Trademark Office.
- General responsibilities include index, organized and maintained case documents for all national and local matters, generated correspondence between parties and counsels, contacted local counsels for case updates, prepared case materials for trials, service hard copy of pleadings, deposition preparation and all other general paralegal duties.
- Assisted with research, preparation, analysis of legal documents and coordinated legalization of documents. Checking rules and procedures (MPEP, CFR).
- Assisted in preparation and filing of U.S. and PCT documents electronically.
- Assisted in processing legal documents: coordinated legalization of documents, information disclosure statement, issue fees, maintenance fees and various legal documents
- Created and maintained trademark and patent docketing system.
- Assisted in researching procedural and administrative question.
- Conducted and Analyzed Patent and Trademark searches using several on-line searching systems.
0-5 years of experience
- Prepared and filed legal documents with the United States Patent and Trademark Office.
- Maintained Trademarks and Service marks for both U.S. and foreign clients.
- Filed change of name and address documents, assignments and Power of Attorneys.
- Pro-actively managed docket.
- Maintained positive communications with both domestic and foreign clients and overseas associates.
- Updated database to reflect current client information.
0-5 years of experience
Trademark scan searches via Trademark Database
- Filed documents with the United States Patent & Trademark Office
- Handled, managed, and maintained legal research, writing, and correspondence to clients/attorneys and foreign counsel
- Provided customer service and maintained client interaction
- Filed various assignments, mergers, security agreements, and/or name change documents
0-5 years of experience
Drafted settlement agreements, engagement letters, complaints, 201K letters
- Completed research assignments for legal issues related to pending litigation
- Researched case law to improve complaints
- Provided administrative support for the supervising attorney, excellent verbal and written skills.
- Filed and processed Trademark and Copyright applications on USPTO
- Briefed cases; researched case law using WestLaw and Lexis Nexis
- Edited draft correspondence and trademark infringement documents
- Maintained trademark files and communicated with clients on a daily basis
- Knowledge of U.S. and foreign trademark rules and procedures
0-5 years of experience
- Provided assistance to attorney on special projects and research pertaining to trademark laws and copyright laws
- Assisted attorney in preparation of trademark/ domain applications and renewals in accordance to local rules, trials, mediation, and depositions
- Assisted attorney in filing trademark assignments and affidavits
0-5 years of experience
Contract Trademark Paralegal and Trademark /Copyright Assistant for Wallace Law Registry and Quorum Lanier. Provided legal services for Campbell Soup Company and E.I. du Pont de Nemours & Co.
- Prosecution of both foreign and domestic trademark applications for du Pont & Campbell Soup.
- Successfully monitored the daily docket for renewals and other deadlines.
- Prepared cease and desist letters and daily correspondence to foreign agents.
0-5 years of experience
Draft and file applications, as well as maintenance documents with the United States Patent and Trademark Office
- Conduct preliminary searches on potential trademarks for clients, and prepare search result reports
- Draft correspondence to foreign associates regarding status updates and trademark filings
- Register and renew domain name registrations
- Research and analyze domain name registration policies
0-5 years of experience
- Prepared and proofread documents and cover letters
- Checked trademark filing receipts for accuracy
- Prepared status charts detailing clients’ trademark portfolios
- Performed preliminary trademark searches on SAEGIS online database
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Trademark Paralegal
Last edited by: Gabriela Barcenas, CPRW, Content Writer II -
Gabriela Barcenas
CPRW, Content Writer IIGabriela is a Certified Professional Resume Writer (CPRW) and career adviser. With 10 years of digital media experience and five years of resume writing expertise, her publication history includes fashion, education, travel, social justice, equitable design and career advice.
