Trademark Paralegal Resume Samples

A Trademark Paralegal is someone who works on trademark legal matters under the direct supervision of a licensed trademark attorney. Some of the core duties associated with this role are listed on the Trademark Paralegal Resume as – applying for trademark protection for names and logos; handling court cases relating to various trademark and other trademark matters, assisting lawyers in research work and paperwork; drafting assignment documents, drafting legal correspondence, and assisting on due diligence reviews.

Those considering to make a career in this line should be able to denote on the resume the following skills and abilities – knowledge of USPTO procedures, experience in conducting trademark clearance searches, proficiency in computerized docketing systems, and MS Office. The candidate seeking this job role should have a degree in law-related fields and an ABA certificate.

Trademark Paralegal Resume example

Trademark Paralegal Resume

Summary : Experienced Trademark Paralegal with over 8 years of intellectual property experience looking to combine professional and academic accomplishments into a career within a public sector organization.

Skills : MS Office, Trademark.

Description :

    1. Independently drafted domestic and international Office Action responses, related prosecution documents, and correspondence to clients.
    2. Communicated with foreign associates regarding international trademark matters.
    3. Registered and managed Internet Domain Names, both generic and country extensions.
    4. Drafted and filed TTAB actions and responses.
    5. Kept accurate time and billing records and comply with clients billing requirements.
    6. Acted as the primary contact for all fixed asset-related activities for MTS.
    7. Performed all fixed asset-related accounting functions within the Fixed Asset module in the MTS ERP system (SAP), including maintenance of master data; month-end closing process; fixed asset additions, deletions and transfers; depreciation calculation and reconciliations of fixed asset ledgers.
                    Years of Experience
                    Experience
                    7-10 Years
                    Experience Level
                    Level
                    Management
                    Education
                    Education
                    MS


                    Trademark Paralegal Resume

                    Headline : Trademark Paralegal with over 5-years demonstrated expertise in the areas of U.S. and international trademark clearance, prosecution, enforcement and portfolio management. Specialist in crafting detailed searches via the Saegis and Corsearch databases with a proven ability to analyze search results and provide strategic recommendations.

                    Skills : Paralegal, Public Administration.

                    Description :

                      1. Conducted comprehensive international trademark clearance searches and order searches from foreign counsel; analyze search results and draft reporting memos with recommendations.
                      2. Prepared and file U.S. trademark applications, statements of use, maintenance and renewal forms, extension requests, and powers of attorney, notices of opposition and basic responses to office actions.
                      3. Managed the filing of new international trademark applications, and oversee all aspects of the prosecution process, including obtaining optimal recitations of goods/services, providing evidence of use, proof of notoriety and strategizing responses to local office actions.
                      4. Maintained international trademark portfolio and provide renewal instructions to foreign counsel.
                      5. Reviewed trademark watch notices and identify conflicting third-party trademark applications.
                      6. Determined an applicant's current use of a conflicting mark and assess their ability to defend an opposition; highlight potential vulnerabilities the watched mark may have to non-use cancellation.
                      7. Acquired the opinion of foreign counsel as to the likelihood of prevailing in an opposition based on the merits and deliberate all findings with the team to determine next steps.
                    Years of Experience
                    Experience
                    5-7 Years
                    Experience Level
                    Level
                    Executive
                    Education
                    Education
                    BS


                    Trademark Paralegal Resume

                    Headline : Preparing risk assessment ratings of potential trademarks for attorney review; Preparing and filing trademark assignment agreements for inclusion in client Asset Purchase and/or Sales Agreements, and requisite assignment documentation for completion of intellectual property transfer recordation in the U.S.

                    Skills : Microsoft Office; Proprietary computer systems; Cryptographic key generation.

                    Description :

                      1. 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.
                      2. Assisted in all phases of domestic and international trademark prosecution and oppositions, managed portfolios for Unilever, Hugo Boss, Athlete's Foot and Walt Disney.
                      3. Drafted correspondence to clients regarding status of applications, registrations, and to seek instructions for upcoming deadlines.
                      4. Managed IP docket system, docketed all incoming deadlines and prepared all docket reports.
                      5. Maintained litigation docket; Familiar with TTAB procedures and filing of UDRP's.
                      6. Prepared trademark applications for electronic filing of new applications, Statements of Use, Sec.
                      7. Ordered all Thomson Compumark trademark searches, assisted in clearance process and processed vendor and foreign associate invoices.
                    Years of Experience
                    Experience
                    5-7 Years
                    Experience Level
                    Level
                    Executive
                    Education
                    Education
                    MS

                    Trademark Paralegal Resume

                    Headline : Trademark Paralegal Professional with over 5 years of international and domestic (US) experience in-house and law firm environments; Primary contact for all Intellectual Property matters at Del Monte Foods Inc.' global trademark portfolio and licensing relationships; Represented Del Monte Foods at the 138th INTA Annual Meeting, Orlando, FL Previously managed Wrigley's Global Oral Care TM portfolio; Nominated in 2013 for Mars, Inc.

                    Skills : Microsoft Office Suite, Adobe Acrobat, Autocad, Legal Research, Sharepoint, Adobe Photoshop.

                    Description :

                      1. Managed the clearance, prosecution, and maintenance of global trademark/copyright portfolios.
                      2. Managed trademark-docketing system.
                      3. Conducted trademark searches.
                      4. Managed global opposition, counterfeiting, and infringement actions.
                      5. Drafted cease and desist letters in connection with trademark/copyright misuse.
                      6. Drafted/submitted responses to office actions issued by the USPTO.
                      7. Prepared and submitted electronic filings with the TTAB.
                      8. Reviewed trademark licensing agreements with staff attorneys.
                    Years of Experience
                    Experience
                    5-7 Years
                    Experience Level
                    Level
                    Executive
                    Education
                    Education
                    B. S. In Legal Studies

                    Trademark Paralegal Resume

                    Objective : Performing trademark, corporation, and Internet domain name searches, and also Supporting six trademark attorneys and two copyright attorneys.

                    Skills : Legal Research, Contract Management, Intellectual Property, Writing, Editing.

                    Description :

                      1. Prepared and filed all trademark documents with the U.S.
                      2. Conducted periodic status reviews of U.S. and foreign trademark filings.
                      3. Corresponded with foreign agents to obtain foreign registrations for clients.
                      4. Corresponded with clients regarding their filings.
                      5. Educated clients with respect to the proper use of trademarks.
                      6. Conducted due diligence searches with respect to mergers and acquisitions involving intellectual property; identify trademarks, copyrights, and domain names; prepare reports.
                      7. Reviewed marketing and advertising campaigns with brand managers to ensure corporate/legal compliance.
                    Years of Experience
                    Experience
                    2-5 Years
                    Experience Level
                    Level
                    Junior
                    Education
                    Education
                    M.A. In History

                    Trademark Paralegal Resume

                    Summary : Motivated Trademark Paralegal professional with over 10 years experience in contract drafting, administration, negotiation, process management, and paralegal responsibilities. Dynamic, proactive team player with a high level of discretion and a solution-oriented approach.

                    Skills : Contract Management, Contract Management, Paralegal, Paralegal.

                    Description :

                      1. 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.
                      2. Gathered and provided foreign counsel with information/documentation necessary to prosecute/maintain trademark applications and registrations and respond to Office Actions.
                      3. Prepared and filed trademark opposition documents with the TTAB.
                      4. Served as a liaison with ongoing clients regarding the maintenance of trademark and copyright portfolios.
                      5. Prepared and conveyed instructions to foreign counsel related to trademark matters.
                      6. Coordinated with two major clients and supervised outside and foreign counsel to assure deadlines were acquired and met; Monitored and reviewed Watch Notices and Official Gazette.
                      7. Conducted and evaluated preliminary word and logo trademark clearance searches.
                    Years of Experience
                    Experience
                    10+ Years
                    Experience Level
                    Level
                    Senior
                    Education
                    Education
                    Master Of Science

                    Trademark Paralegal Resume

                    Objective : Resourceful, hard-working Trademark Paralegal professional with a love of learning and a broad knowledge base, looking for new challenges in a position utilizing strong creative and interpersonal skills.

                    Skills : Microsoft Office, Lotus Notes, Saegis, CorSearch, IManage, Carpe Diem, Lexis, Westlaw, CPI, PATSY.

                    Description :

                      1. Researched and drafted prosecution memorandums regarding potentially infringing trademarks.
                      2. Monitored and created Watch Reports for clients.
                      3. Drafted correspondence to clients regarding the status of their marks.
                      4. Proofread and edited materials for supervising attorneys including cease and desist letters and responses to office actions.
                      5. Drafted and maintained memorandum for clients relating to both foreign and domestic contentious matters involving their marks.
                      6. Conducted legal research relating to trademark law.
                      7. Prepared and filed trademark documents with the United States Patent and Trademark Office, including new applications and maintenance filings such as declarations of use and renewals.
                    Years of Experience
                    Experience
                    2-5 Years
                    Experience Level
                    Level
                    Executive
                    Education
                    Education
                    BS

                    Trademark Paralegal Resume

                    Summary : Working closely with other departments to track acquisitions, disposals, and transfers in order to maintain continuous control over the assets as required by federal, state, and local guidelines and Generally Accepted Accounting Principles (GAAP).

                    Skills : Planning Skills, Paralegal.

                    Description :

                      1. Handled all phases of foreign trademark applications, including preparing initial instructions, and all communication throughout prosecution and renewal.
                      2. Prepared, filed, and docketed U.S. trademark applications.
                      3. Drafted and filed Responses to Office Actions.
                      4. Directed communication with clients to obtain necessary authorization and information for the management of trademark matters.
                      5. Reviewed 10K reports, Licensing Agreements for relevant IP material; prepared electronic applications, renewals, and the other U.S.
                      6. Performed due diligence of trademarks, copyrights, and domain names, file recordal of assignments, and securitization agreements.
                      7. Communicated with foreign and domestic counsel and USPTO Examiners in all pre-registration matters.
                    Years of Experience
                    Experience
                    7-10 Years
                    Experience Level
                    Level
                    Management
                    Education
                    Education
                    MS

                    Trademark Paralegal Resume

                    Headline : Passionate Trademark Paralegal professional with teaching and coaching experience in Educational settings. Extensive background in development and evaluation of resources, materials, and content in Animation, Visual Effects, and Gaming fields. Works closely with others and collaborates to achieve successful outcomes. Thrive in diverse populations and cultures in groups, one on one, or on-line.

                    Skills : Bilingual, Paralegal, Administration.

                    Description :

                      1. Supported the General Counsel in the protection and enforcement of intellectual property rights.
                      2. Managed, from start to completion, a caseload of up to 150 cases relating to misuse, unauthorized use, and infringement of CFP Board's trademarks.
                      3. Initiated cease and desist letters, and handled all subsequent negotiations with minimal supervision.
                      4. Maintained the case management database, ensuring that current and accurate information was available to all users.
                      5. Performed legal research as needed.
                      6. Drafted a new Certification Mark User's Handbook.
                      7. Prosecuted and maintained the U.S. and foreign trademark applications and registrations; Managed U.S. and foreign trademark oppositions, cancellations, and various conflict matters.
                    Years of Experience
                    Experience
                    5-7 Years
                    Experience Level
                    Level
                    Junior
                    Education
                    Education
                    Certificate In Paralegal

                    Trademark Paralegal Resume

                    Summary : Hands-on, practical experience on thousands of U.S. and international trademark cases from beginning to end, including review of specimens, advertising materials, packaging, and websites; the U.S. and international prosecution, enforcement, renewals; Madrid Protocol filings; legalizing and recording ownership transfer documents.

                    Skills : Legal Research, Investigations, Compliance, Analysis, Written Correspondence, Communication, Time Management, Healthcare.

                    Description :

                      1. Assisted to prepare and prosecute trademark and service mark applications domestically including electronic filing and maintenance of trademark applications at the USPTO, monitor prosecution deadlines.
                      2. Worked with foreign counsel in connection with prosecution and maintenance of trademark applications, registrations outside the United States especially in India.
                      3. Communicated and corresponded with clients concerning new and pending applications.
                      4. Managed attorney dockets and prepared status charts showing client registrations and pending applications.
                      5. Conducted research using Lexis, Westlaw.
                      6. Assisted to Organize, maintained, and updated files and docket information related to client's trademark portfolios.
                      7. Worked with six attorneys to manage U.S. and Canadian portfolios of Disney Studios, Disney TV, Disney Consumer Products, Disney Parks, Pixar, Marvel, and Lucasfilm, trademarks from Notice of Allowance to Registration.
                    Years of Experience
                    Experience
                    7-10 Years
                    Experience Level
                    Level
                    Management
                    Education
                    Education
                    MS