Trademark Paralegal
Robert Half
Regional law firm based in San Jose, CA is seeking a detail-oriented Trademark Paralegal to support attorneys in the management of domestic and international trademark matters. This hybrid role requires regular on-site work and offers the opportunity to work closely with a collaborative legal team on all aspects of trademark portfolio management, prosecution, maintenance, enforcement, and related litigation support. The ideal candidate will bring strong organizational skills, a proactive approach, and experience handling high-volume trademark matters in a fast-paced law firm environment.
Job Duties and Responsibilities
- Assists attorneys with planning and managing clients’ trademark portfolios
- Assists with the preparation, filing, prosecution and maintenance of trademark applications at U.S. PTO, including preparation of scanned images for use as specimens
- Assists with the preparation, filing, prosecution and maintenance of trademark applications at WIPO (World Intellectual Property Organization)
- Initiates foreign filings and corresponds with foreign agents concerning foreign applications
- Utilizes ProLaw proficiently to docket action due dates; monitors prosecution deadlines and communicates appropriate responses
- Prepares status charts/reports for and routine letters to clients
- Conducts online trademark searches (U.S. PTO, common law, initiating watch services, etc.)
- Organizes, maintains and updates client and firm files
- Assists attorneys in drafting Office Action responses for US filings and drafting correspondence to clients and to local counsel regarding Office Actions in cases outside of the US.
- Assists attorneys in trademark opposition/cancellation litigation, including performing factual research, drafting discovery and discovery responses, summarizing deposition transcripts, analyzing evidence and trial preparation
Qualifications:
- Minimum of 2+ years trademark paralegal experience in a law firm or in-house legal department
- Must have proficiency in Lanham Act/Federal trademark law & procedure
- Experience with TMEP, TBMP, USPTO ( USPTO Searches; TTAB-TTABVUE, TEAS-prosecution), & UDRP (NAF and WIPO) preferred
- Prior exposer to internet searching for specimens of use/ 3rd party use, domain name searching (WHOIS), and registration and analysis is preferred
- Ability to work on-site in San Jose, CA
Vacancy posted 2 days ago
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