Trade Mark Paralegal

We are working with an international law firm in their search for a CITMA Qualified Trade Mark Paralegal with a minimum of 5 years’ experience and solid drafting skills.

Key responsibilities

• Reviewing Watch Notices, flagging concerns and reporting to clients.
• Reviewing and managing all trade mark and design deadlines, including moving and clearing completed deadlines.
• Reviewing dockets, adding diary entries and monthly/fortnightly reminders, and responding to dockets with updates and outcomes.
• Liaising with clients (by phone and email) on deadlines and obtaining instructions on their trade marks/designs, including Powers of Attorney and notarial requirements.
• Liaising with foreign agents to obtain fee quotes, deadlines and required documents, and relaying client instructions.
• Preparing filing sheets for trade mark and design matters, including fee quotes and classes of goods and services.
• Arranging searches through SAEGIS or Corsearch and reporting results.
• Providing clients with their trade mark schedules; preparing IP trackers for various clients and providing monthly updates.
• Preparing and filing trade mark applications, renewals and recordals (assignments, change/appointment of representative, etc).
• Assisting with the preparation and filing of oppositions, cancellations, revocations and defences thereto, including completion and filing of TM7A, TM7 and TM8 forms; liaising with the UKIPO on withdrawals.
• Filing WIPO applications, including MM12 and MM18, and liaising with clients for execution.
• Arranging execution of Powers of Attorney (UK or overseas) and liaising with foreign agents.
• Liaising with notaries and arranging witnessing and apostilling of documents.
• Reviewing office actions, examination reports and irregularity letters; preparing draft advice to clients and responding to the UKIPO or foreign agents with resolutions following instructions.