Job Details

ID #53643472
Estado Connecticut
Ciudad Eastern CT
Full-time
Salario USD TBD TBD
Fuente Connecticut
Showed 2025-03-15
Fecha 2025-03-15
Fecha tope 2025-05-14
Categoría Legal/paralegal
Crear un currículum vítae
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Trademark Legal Assistant

Connecticut, Eastern CT, 06320 Eastern CT USA
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Galvis Co.® specializes in legal services for entrepreneurs and small businesses. We focus on business formations, contracts, trademarks, copyrights, intellectual property, and commercial leasing, offering seasoned counsel at competitive rates.

We seek an experienced Legal Assistant with trademark experience, who can start immediately—we are unable to provide entry-level training. This role requires legal, administrative, and marketing support, with an emphasis on efficiency, discretion, and professionalism.

Key Responsibilities:

-Draft, review, and organize legal documents (contracts, NDAs, IP filings).

-Manage client communications, consultations, and records.

-Assist with client onboarding, scheduling, billing, and invoicing.

-Create automations/workflows for processes like trademark filings and client intake.

-Contribute to marketing efforts (drafting newsletters, updating the firm’s online presence, and maintaining an email list).

-Publish and distribute content on social media (Instagram, YouTube, LinkedIn) and maintain a content calendar.

Required Skills & Experience:

-Minimum 3–5 years of experience in legal support, preferably in business or IP law.

-Proven stability and longevity in previous roles.

-Strong organizational and time-management skills.

-Excellent written and verbal communication.

-Proficiency in legal research, document management, scheduling, and billing.

-Tech-savvy with a proactive, client-focused approach.

-Experience in small law firms or entrepreneurial settings is a plus.

Key Trademark-Specific Skills:

USPTO Office Filings:

-Prepare Intake Forms: Prepare, send, and review electronic trademark intake forms for final attorney review.

-Prepare and Submit e-Filings through TEAS, including New Applications, Office Action Responses/Extensions of Time, Statements of Use, Maintenance Filings (Sections 8 & 15, Sections 8 & 9, etc.), and Section 7 Requests.

-Bulk Address Changes, Assignments, or Change of Representative: Prepare and file bulk address or representative changes and assignments, streamlining the process for large portfolios.

International Coordination:

-Request Status Updates: Proactively request status updates from foreign counsel on applications, ensuring ongoing monitoring.

-WIPO Filings: Manage new Madrid Protocol application submissions, subsequent designations, and renewal requests to WIPO (via the USPTO), including responses to notices of irregularity. Prepare and file requests through e-Madrid for International Registrations, including Limitations, Renunciations, and Cancellations.

-Receive Updates on Pending Actions: Request and receive updates from foreign counsel on pending actions, relaying critical information to clients.

Client Communications:

-Support Client Use of MyCase Forms: Help guide clients using Galvis & Co.’s vendor and MyCase Forms (e.g., Google Forms, JotForm, etc.), ensuring they can efficiently navigate the forms or platforms.

-Generate Non-Substantive Reporting Updates: Prepare and send periodic, non-substantive reports, such as New Application Filed, Publication Notices, and Maintenance Reminders, to clients and Supervising Attorney.

-Prepare Custom Portfolio Reports: Create customized portfolio reports tailored to client specifications, offering a comprehensive view of their trademark holdings.

Docketing & Monitoring Support:

-Create & Update Matters: Set up new matters in MyCase and make necessary updates based on client correspondence or foreign IP office communications.

-Summarize Infringement Monitoring Results: Review and analyze trademark infringement monitoring results, identifying key points of concern and potential actions.

-Conduct Monthly Audits: Perform regular audits of firm’s docket and ensure firm’s information is current and correct on all platforms.

Search, Monitoring, Enforcement:

-Review Monitoring Reports: Review trademark and domain name monitoring reports and identify potentially infringing activity.

-Knock-Out and Full Use and Registrability Review: Conduct knock-out searches to help assess the availability of a trademark before a full search is conducted; place orders for full searches upon request; provide detailed reviews of full use and registrability searches to help determine whether a trademark can be successfully registered and defended.

-U.S. Opposition and Cancellation Pleadings Preparation: Assist in the preparation of select pleadings for U.S. opposition and cancellation proceedings, helping clients enforce their trademark rights effectively.

Applications and Office Actions:

-Specimens: Identify specimens for Statements of Use and Section 8 Post-Registration filings.

-Dates of First Use: Conduct online searches (including review of archived pages of client websites) to identify earliest use of a mark for purposes of determining dates of first use.

-Goods/Services Identifications: Craft initial ID specifications for new applications.

-Office Actions: Prepare office action response exhibits; create redlines of ID changes proposed in Office Actions for Attorney review.

-Global IP Filings: Preparation and transmittal of filing instructions for national applications to foreign counsel.

Other

-Assess non-use vulnerability in trademark portfolios.

-Conduct periodic coverage gap analysis.

-Conduct due diligence, including verification of all portfolio information and review of chain of title for accuracy.

-Track infringing use of trademarks by third parties to ensure cessation following successful enforcement.

PLEASE SEND A COVER LETTER, RESUME, AND CONTACT INFORMATION FOR AT LEAST 2 PROFESSIONAL REFERENCES, TO [email protected] . PLEASE PUT “REMOTE TRADEMARK ASSISTANT” IN THE SUBJECT LINE OF YOUR EMAIL.

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