Senior Trademark Paralegal

Job Description

Job Description

Premier law firm: [to be disclosed]

Job title: Trademark Paralegal

Practice group: Intellectual Property 

Division focus: Trademark Prosecution

Additional: Strong Bonuses + Benefits

Job type: Full-Time, Non-Exempt + Hybrid 

***Send resumes to: View email address on ziprecruiter.com

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.

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.

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 common law databases.
• Infringement & Enforcement: Assist with trademark enforcement, including potential oppositions, cancellations, and cease & desist letters.
• Litigation Support: Provide crucial litigation support, gathering and organizing evidence for in-house attorneys and external counsel.
• 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.