We are seeking a Trademark Paralegal who will be responsible for documents and processes relating to trademarks. Trademark Paralegals will be expected to perform all job duties with a commitment to providing outstanding value-added service to clients and maintaining an atmosphere of teamwork and continuous improvement.

Essential Functions and Duties

The Trademark Paralegal supports attorneys in the overall operations of the firm. Responsibilities include but are not limited to:

· Conduct preliminary trademark clearance searches.

· Conduct preliminary enforcement investigations.

· Prepare and file submissions at the USPTO, including new applications, assignments, office action responses, requests for extensions of time, statements of use, and maintenance filings.

· Gather specimens of use for submission to the USPTO.

· Assist attorneys in enforcement actions including TTAB proceedings and proceedings in state and federal courts.

· Prepare and/or obtain documents for legalization.

· Conduct correspondence with clients and foreign associates regarding trademark prosecution and enforcement.

· Proficiency with use of the USPTO’s online filing system, includes Trademark Center, Trademark Electronic Application System (TEAS), the Assignment Branch, and the Trademark Trial and Appeal Board (TTAB)

· Research legal issues.

· Maintain files and track docket deadlines.

Required Skills

· Communication – Ability to communicate clearly and accurately both verbally and in writing.

· Computer/Technical – Expertise in MS Office products, docketing systems, firm management/e-billing software, etc. Technology savvy with a preference for working digitally.

· Organization/Planning – must be able to create schedules, manage multiple priorities and accurately track extensive details.

· Legal knowledge – Knowledge of a variety of legal documentation and process.

Critical Competencies

· Detail Oriented – Shows a high level of care for the quality of the work and the accuracy of detailed information.

· Flexible – Able to manage multiple priorities and respond quickly/positively to shifting demands and opportunities; ability to work under tight deadlines.

· Learning Agile – Proactively learns new skills, willing/able to learn new technologies, open to feedback and willing to take direction.

· Team Oriented – Prefers working in a team environment. Establishes and maintains good working relationships. Willing to help others and share knowledge and expertise.

· Leadership – Ability and desire to take a leadership role.

· Professional – Communicates and behaves in a way that reflects positively on the firm and creates a great client experience.

· Demonstrates discretion – Can be trusted to handle confidential information discreetly.

· Problem Solving – Takes initiative to find ways to do things more simply and effectively.

Basic Qualifications

· Bachelor’s degree and/or Paralegal certification (or equivalent experience) required.

· 3+ years’ experience in intellectual property law/trademarks required.

· Demonstrated experience and proficiency in using software technology including Microsoft Word, Outlook, Excel, and Anaqua, USPTO and WIPO systems.

Preferred Experience:

Trademark searches, WIPO/Madrid applications and maintenance, Customs recordals.

Salary Grade/Range:

$75,000 - $100,000

Position Description

Renner Otto is an intellectual property (IP) law firm located in Cleveland’s Playhouse Square. We’re committed to “Advancing Innovation” because we believe that a great idea can change the world. Our highly skilled and professionally recognized attorneys have focused on protecting those ideas since 1880. We are committed to a world class work environment with very competitive compensation for outstanding work.

We are seeking an IP Operations Specialist who will be responsible for documents and processes relating to patent prosecution. IP Operations Specialists will be expected to perform all job duties with a commitment to providing outstanding value-added service to clients and maintaining an atmosphere of teamwork and continuous improvement. We are accepting applicants on an entry-level basis as well as applicants with experience.

Essential Functions and Duties

The IP Operations Specialists works with attorneys in the overall operations of the firm. Responsibilities include but are not limited to the following:

• Performs daily maintenance and overall operation of patent prosecution, including but not limited to:

• Monitoring tasks on the docket and reminding attorneys/clients as appropriate.

• Processing incoming emails/documents for the purpose of progressing accurate, timely work product

• Drafts documents and letters using proper templates based on firm standard or client-specific instructions

• Manages legal documentation and correspondence in strict confidence

• Integrates new files and records in the client/matter database

• Processes incoming correspondence from clients, foreign associates and intergovernmental agencies worldwide

• Leverages a variety of software and technology to manage work

• Takes on informal leadership roles within the team and work with the Executive Director to identify and implement administrative processes improvements

• Serves as subject matter expert by training and advising less experienced team members. May act as back up for the Lead role if required.

Required Skills

• Communication - Ability to communicate clearly and accurately both verbally and in writing.

• Computer/Technical - Expertise in MS Office products, docketing systems, firm management/e-billing software, etc. Technology savvy with a preference for working digitally

• Organization/Planning - must be able to create schedules, manage multiple priorities and accurately track extensive details.

• Legal knowledge - Knowledge of a variety of legal documentation. Able to independently manage the most complex IP functions. Deep knowledge of patents, trademarks, and intellectual property.  

• Critical Competencies

• Detail Oriented – Shows a high level of care for the quality of the work and the accuracy of detailed information. 

• Flexible – Able to manage multiple priorities and respond quickly/positively to shifting demands and opportunities; ability to work under tight deadlines;

• Learning Agile – Proactively learns new skills, willing/able to learn new technologies, open to feedback and willing to take direction

• Team Oriented – Prefers working in a team environment. Establishes and maintains good working relationships. Willing to help others and share knowledge and expertise.

• Professional – Communicates and behaves in a way that reflects positively on the firm and creates a great client experience.

• Demonstrates discretion – Can be trusted to handle confidential information discreetly.

• Problem Solving – Takes initiative to find ways to do things more simply and effectively

Basic Qualifications

• High School Diploma required. Associates or Bachelor's degree and/or Paralegal certification preferred.

• Demonstrated experience and proficiency in using software technology including Microsoft Word, Outlook, Excel.

Preferred Qualifications

• 5+ years prior experience in a legal assistant/paralegal position in an area of law a high degree of accuracy (e.g. IP, tax, real estate, transactional or environmental law)

• 3 years prior experience in IP.

• 1-2 years docketing experience.

• Demonstrated experience and proficiency in using legal software technology including IP related software

• Familiarity with Anaqua strongly preferred.

  Salary Grade/Range:

  47,000-70,000K (Based on Experience)