Trademark Paralegal

Job title: Trademark Paralegal


Practice group: Intellectual Property


Compensation: $80,000-$110,000/per year

Additional: Strong Bonuses + Benefits

Job type: Direct-Hire, Full-Time & Non-Exempt


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The Opportunity

Are you passionate about intellectual property? Join our dynamic team and play a pivotal role in managing trademark portfolios, handling trademark clearance, and driving U.S. and foreign trademark prosecution.

Job Description

• Trademark Prosecution & Maintenance: Prepare and file documents with the USPTO, including applications, office action responses, extensions, statements of use, affidavits, renewals, assignments, and powers of attorney.
• Global Coordination: Work closely with foreign counsel on trademark applications and registrations, ensuring compliance with international requirements.
• Client Communication: Maintain constant communication with clients and foreign counsel regarding clearance, filing instructions, office actions, and potential conflicts.
• Trademark Clearance & Searches: Conduct preliminary and comprehensive searches using third-party platforms and databases.
• Infringement & Enforcement: Assist with trademark enforcement, including potential oppositions, cancellations, and c&d letters.
• Database Management: Enter and update data in the trademark database (PATTSY), generating reports as needed.
• Cost Estimates: Prepare cost estimates for new filings.
• Customs Registrations: Prepare and file customs registrations and renewals with the U.S. Customs and Border Patrol.
• Ownership Documentation: Prepare and record ownership and change of name documents related to trademarks.
• Due Diligence: Conduct thorough due diligence on trademark portfolios.
• Monitoring & Deadlines: Assist with monitoring attorney dockets, managing deadlines, and recording billable hours accurately.

Must-Haves

• Proven experience in U.S. and foreign trademark prosecution, maintenance, and renewal.
• Bachelor's Degree, Paralegal Certificate, OR significant experience in lieu of a degree.
• Strong knowledge of trademark clearance databases and research tools like PATTSY, Saegis, Lexis/Nexis, and Westlaw.