Trade mark Paralegal
The role
We are seeking an experienced Trade Mark Paralegal to join our IP & Commercial team. This is an excellent opportunity for a skilled Trade Mark Paralegal to join a growing and friendly team. The successful candidate will provide comprehensive trade mark support to the team as it expands to meet the challenges and opportunities of Brexit.
Role responsibility
- Preparing and filing trade mark applications and oppositions.
- Reporting Office Actions to clients.
- Drafting response to Office Actions (including foreign applications).
- Citation reporting/watch notice reporting.
- Liaising with overseas lawyers and agents.
- Dealing with assignments and other recordals.
- Dealing with portfolio transfers and adding/deleting records, contacting agents.
- Updating clients (TM app progress, disputes updates, opposition’s next steps etc.)
- Assisting with clearance searches including drafting reports.
- Trade mark specification drafting, including drafting technically correct limitations when required.
- Sending out renewal reminders and dealing with renewals.
- Client portfolio reviews.
- Processing communications from IPOs. Including downloading and filing e-communications and certificates.
- Updating WebTMS Infinity with due dates, deadlines etc. Amending/creating WebTMS Infinity word merges.
- Assisting with trade mark billing.
- Communication with the team on new developments.
- Assisting with preparing cost estimates and drafting trade mark engagement letters to clients.
About you
Ideally you will be able to demonstrate;
- An in-depth knowledge and experience in dealing with all aspects of trade mark formalities, including experience of having dealt with various trade mark registries, preparing and filing applications and oppositions etc, and handling registry payments.
- A good understanding of trade mark law and procedure.
- Previous experience of dealing with clients, reporting to and taking instructions from them.
- Excellent administrative skills including experience in the administrative aspects of managing trade marks.
- Experience in operating WebTMS Infinity with a high degree of accuracy and competence.
- Excellent attention to detail and accuracy, even when working under pressure to tight deadlines.
- The ability to handle all communications and processes in an efficient and timely manner.
Benefits
- Competitive salary
- 25 days annual holiday
- Permanent Health Insurance
- Life Assurance
- Interest free Season Ticket Loan
- Private Healthcare
- Pension Scheme
- Staff Introductory Scheme
- Employee Assistance Programme
About us
We are a London based, full-service law firm, specialising in providing straightforward advice to entrepreneurial businesses and individuals on domestic and international matters.
We have grown substantially in recent years, including two mergers and an office move. We’ve also matured in terms of our approach to providing advice to our clients, seeking to simplify and improve the experience of working with a modern, independent law firm.
We’re proud of our journey. Without losing sight of where we’ve come from, we are focused on where we’re going. We are evolving and growing every day. And just like our clients, we are ambitious and moving forward. Many of our clients are entrepreneurial, ambitious enterprises who are often privately or family owned, or private equity backed. We are one of the only London based law firms with a large private wealth offering alongside significant business law capability.
The firm also advises major corporates on particular specialist legal matters who find our straightforward approach a compelling alternative to larger, less personal firms.