Guy G. Legagneur
Brooklyn,NY
Summary
Highly skilled trademark paralegal with extensive experience in trademark portfolio management and compliance. Specializes in conducting comprehensive trademark searches and managing international trademark filings. Proficient in client and foreign counsel communications, ensuring adherence to regulatory requirements.
Overview
14
14
years of professional experience
Work History
Trademark Paralegal
Sills Cummis and Gross
New York, New York
09.2024 - Current
- Prepared and filed trademark applications with the United States Patent and Trademark Office.
- Managed and monitored deadlines for trademark renewals and maintenance filings.
- Corresponded with clients to collect specimens for Statements of Use, Declarations of Use, registration renewals, and Office Actions, ensuring compliance with regulatory requirements.
- Monitored trademark portfolios to ensure compliance with legal requirements, both domestically and internationally.
- Correspond with foreign counsel regarding international trademark laws and compliance to support global filing strategies and assignments such as transfers of ownership.
- Conducted preliminary trademark searches to identify potential conflicts, likelihood of confusions, and other risks.
- Review Office Actions and offer solutions on how to respond to office actions received from USPTO.
- Filed renewals and recorded transfers of ownership with the USPTO and foreign counsel with PTO in foreign countries and jurisdictions.
- Organized and maintained comprehensive records of trademarks and related correspondence using programs such as iManage.
- Updated attorney notes in trademark docketing system when corresponding with clients, foreign counsel, and institutions with the authority to impose trademark laws.
- Corresponded with clients regarding status of their trademark applications both domestically and internationally.
- Prepared cost estimates for trademark services, aiding clients in understanding potential financial commitments.
- Organized and maintained electronic database of records for each client matter.
- Review comprehensive trademark search reports.
- Assist with drafting cease-and-desist letters, affidavits of use, assignments, license agreements, and other legal documents related to trademarks.
- Conducted due diligence for potential sale or purchase of trademark portfolios, identifying key risks and opportunities in domestic and international markets.
- Generated reports on deadlines and renewals using various software programs.
- Maintained online docketing system for tracking all trademark matters in progress.
- Organized legal documents in company filing systems and databases.
- Drafted motions, briefs and other legal documents for TTAB related matters.
- Met with clients and attorneys to discuss case details and evidence.
Intellectual Property Legal Assistant
Goldberg Segalla, LLP
New York, New York
12.2021 - 08.2024
- Assisted partners and associates with patent litigation and trademark prosecution, ensuring thorough support on legal matters.
- Assisted attorney with filing and maintaining trademarks, conducting a search for potentially infringing trademarks online and through USPTO’s website, assessing the strength of a desired mark and the likelihood it would be deemed confusable and preparing and setting deadlines for SOUs
- Drafted and responded to cease and desist letters to protect client intellectual property rights.
- Drafting, filing, and proofreading Briefs, Notices, Letters, Motions, Petitions, Responses, Creating Table of Contents (TOCs) and Table of Authorities (TOAs), Drafting shells for Interrogatories (ROGs) and Request for Production (RFPs)
- Assisting with Patent cases under Inter Partes Review (IPRs)
- Filing via PACER, proficient with Federal Filings across all 50 states which entails reviewing Local Laws, Judges Rules, and Standing Orders for the respective state.
- Assisting with Trial Prep
- Responsible for administrative tasks such as, updating the calendar to match the case dockets that consist of scheduling orders or deadlines, submitting reimbursements, check requests, or credit card authorizations to pay for vendors or expenses, scheduling travel and hotel itinerary, coordinating video/conference calls, opening and closing files per firm guidelines, creating secure file shares for discovery documents to be shared with local counsel, opposing counsel, judges and clients
Partner’s Legal Assistant
Wenig Saltiel LLP
03.2021 - 11.2021
- Assist Partners, Associates, and of Counsel with all matters related to real estate litigation and administrative matters in a fast-paced environment.
- Prepare and assemble litigation documents such as: Complaints, Motions, Affidavits, Affirmations, Exhibits, etc. to be served to opposing counsel or pro se litigants by electronically filing to NYSCEF, and by way of a process server.
- Proofread litigation documents for accuracy and clarity before final revision by partner, managing traffic of litigation papers for timely filing via NYSCEF, including correspondence to court, judges, opposing counsel, and clients.
- Knowledgeable of legal docket search software, namely ProLaw. Using legal docket software to manage the filings of all litigation related documents and to set reminders for subsequent actions.
- Entered billing information into legal docketing software for partners and associates, ensuring accurate tracking of court appearance-related expenses.
- Drafted documents including Affidavit of services, Notice of Appearances, Notice of Entry, Consent to Change Attorneys, Retainers, and law firm letters.
- Assisted with administrative matters including file management per firm policy, scheduling consultations for partners and associates with potential clients, reviewing malpractice reports for incomplete tasks, and correcting docket errors.
Trademark Paralegal
HBI Group, Inc., A Hinduja Group Company
New York, NY
09.2016 - 10.2020
- Managed the intellectual property portfolio for Hinduja Global Solutions and Karma Network in the areas of entertainment, media, software, and digital technology
- Assisted in all phases of trademark prosecution and maintenance, including filing, conducting searches, maintaining and docketing US and international trademark applications, responding to USPTO examiner office actions, collecting evidence of use (SOUs), reviewing watch notices and trademark clearance searches, and drafting analysis emails on risks and availability of marks for registration.
- Communicate with examining attorneys at USPTO and WIPO for trademark filings, renewals and office action responses, maintenance, and general questions
- Preparation and filing of Section 8 &15 Declaration of Use, Section 8 & 9 Renewal, SOUs, Extension on SOUs, Power of Attorneys, and Assignment Recordation
- Enforced clients' intellectual property rights by drafting cease and desist letters, analyzing watch notices, communicating with clients about USPTO and WIPO notices received, and conducting online infringement searches.
- Filed copyright claims through eCO for videos, music, and visual artworks with the U.S. Copyright Office (USCO), conducted searches through the online public records catalog and drafted reports of those search results
- Prepared and reviewed various contracts, including non-disclosure agreements (NDAs), master service agreements (MSAs), statements of work (SOWs), vendor agreements, independent contractor agreements, and release forms.
- Researched projects and created detailed reports on findings
- Assisted the compliance department with legal administrative tasks.
Real Estate Paralegal
Ebert Lontok, LLC
10.2015 - 01.2016
- Assisted with the entire real estate transaction process, namely the purchase or sale of a house, condominium, or cooperative apartment in the greater New York City region
- Prepared contracts of sale, deeds, power of attorneys, FIRPTAs and closing statements
- Ordered and reviewed ACRIS, lien searches, title reports, conducted due diligence and prepared documents for closing
Closing Paralegal
Allen, Morris, Troisi & Simon, LLP
06.2012 - 10.2015
- Represented Citibank on real estate closing transactions, specifically, the sale of houses, condominiums, and co-ops
- Completed CEMAs, closed home equity lines of credit, loan refinances, and short sale transactions
Education
Bachelor of Arts - Political Science, Philosophy, English/Literature
John Jay College of Criminal Justice
06-2011
Skills
- Trademark research
- Searching trademarks via USPTO website
- Trademark clearance
- Lanham Act compliance
- Legal document review
- Document drafting
- Writing detailed reports
- Proficient with Saegis, LexisNexis, Corsearch, iManage, and Dennemeyer Docketing
- Trademark law knowledge
- Organizational skills
- Legal correspondence
- Researcher
License
Notary Public, New York
Timeline
Trademark Paralegal
Sills Cummis and Gross
09.2024 - Current
Intellectual Property Legal Assistant
Goldberg Segalla, LLP
12.2021 - 08.2024
Partner’s Legal Assistant
Wenig Saltiel LLP
03.2021 - 11.2021
Trademark Paralegal
HBI Group, Inc., A Hinduja Group Company
09.2016 - 10.2020
Real Estate Paralegal
Ebert Lontok, LLC
10.2015 - 01.2016
Closing Paralegal
Allen, Morris, Troisi & Simon, LLP
06.2012 - 10.2015
Bachelor of Arts - Political Science, Philosophy, English/Literature
John Jay College of Criminal Justice