Paralegal / Legal Assistant (Trademarks) Resume Example

Assisted one partner and two associate attorneys in the Intellectual Property Group as a Trademark Prosecution Coordinator/Legal Assistant, handling both foreign and domestic trademark prosecution.

 Maintain domestic and international trademark/service mark, copyright, and domain name files; monitor the attorney dockets, work closely with and promptly advise the Docketing Assistants when there are any changes in due dates and clients' trademark portfolios; send routine reporting and reminder letters to clients on a timely basis; proofreading, copying and mailing documents as needed; prepare e-faxes, emails; perform pre-clearance “knock-out” searches to confirm potential availability of clients' proposed new trademark / service mark; prepare and electronically/manually file domestic trademark applications and related correspondence; gather evidence in support of in-use applications; secure necessary signature/authorizations and approved documentation for domestic and foreign trademark applications, Statements/Declarations of Use, Section 8 & 15s, renewals and any other purpose; prepare and file, through foreign counsel, foreign trademark applications and prepare and attend to Powers of Attorney and necessary legalizations; prepare follow-up and status check correspondence and email

 Provide support for Trademark Trial and Appeal Board opposition and cancellation proceedings and appeals

 Prepare trademark related cost estimates and create inventory and due date reports as needed for attorneys and external clients in Word, Excel and other IP management and docketing software

 Prepare and electronically file copyright applications

 Assist with domain name related matters

 Prepare and process new client documents, as well as transferred portfolios to firm, and assist in coordinating notification to foreign counsel

 Provide remote assistance to Houston personnel with trademark matters as needed

 Meet with, phone or email the attorneys daily to verify projects, appointments and priorities for the day; check the attorneys' calendar daily and update or make inquiries as necessary; maintain and update attorney task list and deadlines in Outlook and ensure the attorneys are aware of deadlines

 Enter Partner's hours in the timekeeping (Carpe Diem) system on a consistent and timely basis; prepare expense reports; requests for reimbursement, including compiling appropriate documentation

Supported intellectual property partner in litigation, trademark/service mark applications and prosecution, licensing and other contract matters.

 Litigation – created and maintained trail books, pleading books, case files and correspondence; prepared contact sheets for all cases; created and updated case calendars based on scheduling orders; assisted in and coordinated document productions; organized and created notebooks for materials provided to expert witnesses

 Trademark/Service Mark Prosecution – electronically/manually prepared trademark/service mark applications and related correspondence; gathered specimens in support of in-use applications; prepared Statements of Use, as well as maintenance documents, including Section 8 & 15 declarations and renewal documents

 Contract Matters – supported creation of extensive form files for patent and technology license agreements, joint development agreements and confidentiality agreements

 Speeches/Presentations – supported preparation of three chapters in a book for a course on Designing Around Valid U.S. Patents; obtained and verified case citations; researched Federal Circuit Daily Log of new case opinions and updated collection of pertinent cases; coordinated travel arrangements to and from course locations

 General and Administrative – maintained general research and form files; sensitively handled partner's confidential business and personal matters; as needed, assisted other members of the IP team, including two associate attorneys and paralegals, with transcribing and revising patent applications, responses to office actions, declarations, powers of attorney, assignments, IDSs and client correspondence