Senior Trademark Paralegal
Capstone Search Partners
Trademark ParalegalAre 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.
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