Legal Assistant Paralegal
Resume:
MADALYN MERCADO
Maspeth, NY 11378
Cell: 917-***-****
adtc54@r.postjobfree.com
EXPERIENCE
Bloomberg L.P 1/3/2012 - Present
In-House IP/Trademark Administrator
Prepare Trademark Applications, Extension Requests, Statements of Use; Combined Declaration of Use and Incontestability; Combined Declaration of Use and Renewal…etc., attend to electronic filing of same with U.S. Patent and Trademark Office.
Prepare Trademark assignments, mergers, security agreements and security releases; and attend to the electronic filing of same with the Assignment Division at the U.S. Patent and Trademark Office.
Conduct and review trademark searches using CorSearch, and the Internet to determine the availability of a proposed mark.
Responsible for maintaining domain names, namely, transferring, registering.
prepare and file UDRP action with the National Arbitration Forum.
Correspond with foreign associates regarding the prosecution of trademarks, namely, arranging for the filing of foreign trademark applications and renewal of trademark registrations in various territories; coordinate with the foreign associates to attend to the Office Actions or/and any supportive documents to maintain a registration; attending to the recordal of trademark assignment, Change of Name, Merger in various territories.
Prepare Power of Attorney, Deed of Assignment; attend to authentication/ legalization of Power of Attorney, Declarations and other support documents presented to the respective consulates and Departments of State in support of filing foreign Trademark Applications, Renewal Applications and Assignments.
Responsible for trademark docketing (domestic & foreign) and Extension of Protection registration linked to International Registrations; namely, updating and maintaining deadlines and the current status of applications/registrations using various docketing software programs; prepare customized reports with various criterion.
Prepare copyright applications and recording assignments with the U.S. Copyright Office.
Willkie Farr & Gallagher LLP 7/2011 – 12/2011
Trademark Paralegal
Conducted and review trademark searches using CorSearch, Saegis, Lexis/Nexis and Internet to determine the availability of potential mark.
Prepared Trademark Applications, Extension Requests, Statements of Use; Combined Declarations of Use and Incontestability; Combined Declaration of Use and Renewal attend to electronic filing of same with U.S. Patent and Trademark Office.
Prepared trademark assignments, mergers, security agreements and security releases; and attend to the electronic filing of same with the Assignment Division at the U.S. Patent and Trademark Office.
Corresponded with foreign associates regarding the prosecution of trademarks, namely, arranging for the filing of foreign applications and renewals of the registrations in various territories; coordinate with the foreign associates to attend to the Office Actions or/and any supportive documents to maintain a registration; attending to the recordal of trademark assignment, Change of Name, Merger in various territories.
Prepared Power of Attorney, Deed of Assignment; attend to authentication/ legalization of Power of Attorney, Declarations and other support documents presented to the respective consulates and Departments of State in support of filing foreign Trademark Applications, Renewal Applications and Assignments.
Responsible for trademark docketing (domestic & foreign) and Extension of Protection registration linked to International Registrations; namely, updating and maintaining deadlines and the current status of applications/registrations using WorldSuite; prepare customized reports with various criterion.
Responsible for maintaining domain names, namely, registering, renewing and transferring.
Prepared/filed applications and recording assignments with the U.S. Copyright Office.
Proskauer Rose LLP 10/2008-7/2011
Trademark Paralegal
Prepared Trademark applications, Extension Requests; Statements of Use; Combined Declaration of Use and Incontestability; Combined Declaration of Use and Renewal, and attend to electronic filing of same with U.S. Patent and Trademark Office.
Prepared trademark assignments, mergers, security agreements and security releases; and attend to the electronic filing of same with the Assignment Division at the U.S. Patent and Trademark Office.
Corresponded with foreign associates regarding the prosecution of trademarks, namely, arranging for the filing of foreign applications and renewals of trademark registrations in various territories, coordinate with the foreign associates to attend to Office Actions or/and any supportive documents to maintain a registration; attending to the recordal of trademark assignment, Change of Name, Merger in various territories.
Prepare Power of Attorney, Deed of Assignment; attend to authentication/ legalization of Power of Attorney, Declarations and other support documents presented to the respective consulates and Departments of State in support of filing foreign Trademark Applications, Renewal Applications and Assignments.
Responsible for trademark docketing (domestic & foreign) and Extension of Protection registration linked to International Registrations; namely, updating and maintaining deadlines and the current status of applications/registrations using PATTSY and PATTSY WAVE; prepare customized reports with various criterion.
Responsible for maintaining domain names, namely, registering, renewing and transferring.
Prepared copyright applications and recording assignments with the Copyright Office.
Day Pitney LLP 5/2007-10/2008
Trademark Specialist
Prepared U.S. Trademark Applications, Office Actions, Extension Requests, Statement of Use, and Renewal Applications, and attend to electronic filing of same with U.S. Trademark Office.
Prepared Power of Attorney, Deed of Assignment; attend to authentication/ legalization of Power of Attorney, Declarations and other support documents presented to the respective consulates and Departments of State in support of filing foreign Trademark Applications, Renewal Applications and Assignments.
Responsible for trademark docketing (domestic & foreign); including updating and maintaining deadlines and the current status of applications/registrations using CPI.
Responsible for corresponding with foreign associates regarding to the prosecution of foreign trademark application and maintaining trademark registrations, namely, Declarations of Use and renewals.
Conducted and review trademark research and searches using Saegis, Lexis/Nexis and Internet to determine the availability of client’s trademark.
Responsible for maintaining domain names, namely, registering, renewing and transferring.
Baker Botts LLP 5/2006-5/2007
Trademark Paralegal
Responsible for the preparation and filing of domestic and international filings; Communicated and coordinated with foreign associates regarding the prosecution of foreign trademark applications and registrations.
Prepared reporting letters to clients in connection with filing and registration particulars of Trademark Applications, Office Actions, and Renewals (both U.S. and foreign).
Analyzed trademark availability searches and handled protection of all aspects of trademark prosecution on behalf of clients.
Prepared Power of Attorney, Deeds of Assignment, attend to authentication/ legalization of Power of Attorney, Declarations and other support documents presented to the respective consulates and Departments of State in support of filing foreign Trademark Applications, Renewal Applications and Assignments.
Prepared and filed statutory declarations to show acquired distinctiveness through use.
Reviewed watch notices; initiated the filing of oppositions and/or cancellation action proceedings.
Responsible for trademark and litigation docketing; including updating and maintaining deadlines with the current status of applications/registrations using CPI.
Kramer Levin Naftalis & Frankel LLP, New York, NY 3/2001-5/2006
Legal Assistant
Prepared U.S. Trademark Applications, based on Use and Intent to Use, prepare Statements of Use and Renewal Applications, and attend to filing of same with U.S. Trademark Office.
Prepared letter or electronic mail to respective Trademark Offices in connection with the request for correction of incorrect particulars on Certificate of Registration and/or Certificate of Renewal.
Prepared reporting letters to clients in connection with filing and registration particulars of Trademark Applications, Office Actions, and Renewals (both domestic and foreign).
Prepared Power of Attorney, Deeds of Assignment, attend to authentication/ legalization of Power of Attorney, Declarations and other support documents presented to the respective consulates and Departments of State in support of filing foreign Trademark Applications, Renewal Applications and Assignments; consult with docketing department including instructing department of appropriate deadlines and actions.
Prepare Cease and Desist letters to infringers of client’s trademarks; Consultation with client concerning appropriate strategic actions in order to obtain registration of client’s trademark and enforcement of same.
Responsible for the docketing of trademark deadlines and generated reports by various criteria to support legal documents. Communicated and coordinated with client to obtain specimens via the internet or client’s marketing department to support filings in connection with their trademark portfolio.
Prepared computerized trademark reports, review incoming correspondence from client and trademark office, and attend to appropriate distribution.
EDUCATION:
Mercy College, 555 Broadway, Dobbs Ferry, NY 10461 May-2006
Bachelor of Science, Legal Studies/Paralegal Studies
SOFTWARE SKILLS:
Microsoft Office, Outlook, Anaqua, Pattsy, Pattsy Wave, CPI, WorldSuite, Anaqua, DTE, CorSearch, Saegis, CSC-NameProtect, LexisNexis, WestLaw Softwise, Docs Open, DeltaView, PATTSY WAVE
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