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Senior Trademark Paralegal

Capstone Search Partners

Trademark Paralegal

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.
Vacancy posted 3 days ago
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