Trademark Paralegal

Position Description

As a Trademark Paralegal at Schneider Electric you will assist multiple attorneys and other professionals in the company’s Legal Intellectual Property Group.

Duties & Responsibilities:

• Manage trademark-related deadlines by sending timely reminders to internal business clients and attorneys and ensuring that deadlines are handled
• Manage an internal trademark database, including but not limited to setting up new matters, docketing all incoming and outgoing correspondence, uploading documents, verifying deadlines, closing matters as appropriate, and generating and preparing trademark reports
• Conduct in-house trademark screening searches on the TESS, SAEGIS, Corsearch, and WIPO Global Brand Database
• Prepare and file US trademark applications, renewal applications, non-substantive office action responses, use declarations, extensions of time, and other USPTO filings
• Prepare and file international applications and extensions of international registrations with the World Intellectual Property Office (WIPO)
• File documents such as assignments and name changes with the USPTO and other relevant IP Offices
• Prepare and file non-substantive procedural documents with the Trademark Trial and Appeal Board
• Communicate with internal business clients to collect information and instructions related to trademark searches and filings
• In coordination with managing attorneys, instruct trademark prosecution and maintenance matters handled by foreign law firms and coordinate the preparation, execution, notarization, legalization, and apostille of documents filed with international trademark offices
• Conduct initial review of trademark watch notices
• Assist with gathering evidence in support of contentious matters relating to trademarks
• Provide trademark budget and invoicing support as needed
• Assist with review of collateral for proper trademark use and attribution
• Provide IP support for projects as needed

Ideal candidate will be based in Boston, but remote-based candidates may be considered as well.

Qualifications

Minimum Requirements:

• 5+ years’ experience as a trademark paralegal, with strong preference for prior in-house experience (Bachelor’s degree and/or paralegal certificate required)
• Experience handling a broad range of global trademark issues, as well as domain name, social media, and copyright issues
• Experience conducting and analyzing trademark searches using online global databases, such as SAEGIS
• Experience filing applications, renewals, and other documents with the USPTO, as well as familiarity using the TMEP
• Significant prior use of trademark portfolio management databases
• Comfort working with international trademark firms
• Proficiency with Windows-based software and Microsoft Word, Excel, Outlook and Teams required

Preferred Skills & Competencies:

• Excellent written and oral communication skills
• Strong organizational and time management skills and comfort overseeing high-volume, active docket with numerous deadlines
• Excellent attention to detail
• Friendly and collaborative style that fits with a diverse and inclusive culture within a multinational organization

About the Organization

Schneider Electric is a multinational company that specializes in digital automation and energy management in over 100 countries. Schneider Electric and its group of companies address homes, buildings, data centers, infrastructure and industries by combining energy technologies, real-time automation, software, and services.  Schneider Electric employs more than 130,000 people worldwide, and has a talented team of professionals in its in-house IP Legal Department.

How to Apply

Visit the application link to apply today!

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