Paralegal - Trademark

Overview

A law firm is seeking a Trademark Paralegal to support attorneys within the Intellectual Property group. This role requires the ability to work in a fast-paced environment handling time-sensitive materials while maintaining strict confidentiality. Remote and hybrid remote/in-person work arrangements will be considered.

Salary Range: $70,000 - $100,000, dependent on location and experience level.

Responsibilities

• Prepare and file domestic, foreign, and WIPO trademark applications and related prosecution documents, including statements of use, requests for extensions of time, maintenance declarations, declarations of use and incontestability, renewal applications, priority documents, and powers of attorney.
• Prepare and record assignment and change of name documentation.
• Manage worldwide client trademark portfolios.
• Assist with strategy and correspondence for trademark enforcement abroad and online, including customs recordals and e-commerce brand protection platforms.
• Research the Trademark Manual of Examining Procedure (TMEP) for procedural questions.
• Maintain knowledge of US and foreign trademark rules and monitor changes.
• Assist with preparation of routine reporting correspondence to clients and foreign associates.
• Prepare foreign filing cost estimates.
• Compile documentation required for foreign filings; correspond with foreign associates on filing, prosecuting applications, and renewing registrations.
• Prepare and/or obtain documents for legalization; review incoming correspondence from foreign associates for docketing and non-substantive responses.
• Review office actions and draft initial reporting emails to clients.
• Perform trademark searches and draft findings.
• Prepare reports, charts, and lists of trademark-related information upon request.
• Research and evaluate potential specimens showing use for submission to the USPTO or foreign jurisdictions.
• Assist with TTAB proceedings, foreign opposition and cancellation proceedings, and trademark litigation, including drafting and filing documents, maintaining pleading files and dockets.
• Assist with registration, maintenance, and transfer of domain names and UDRP proceedings.
• Coordinate with attorneys and accounting to assist with complex billing inquiries as needed.
• Proactively manage trademark prosecution dockets; monitor and follow up on dates associated with US and foreign patent prosecution dockets.
• Provide support to IP team members with special projects and overflow of routine responsibilities.
• Maintain positive relations with internal clients and coworkers; contribute to a self-directed team structure to assist with overflow and specialized tasks.

Requirements

• High school diploma required; bachelor’s degree preferred.
• Minimum of three years of trademark administration or paralegal experience, preferably in a law firm.
• Additional knowledge of patent prosecution and/or IP litigation is a plus.
• Experience with Microsoft Office Suite and Adobe Pro required.
• Familiarity with AltLegal docketing software, PageVault, and Stencil is a plus.
• Familiarity with Corsearch TrademarkNow or comparable trademark search platforms, WIPO Brand Database, and WIPO Madrid Monitor.
• Excellent time management skills and ability to work under pressure; ability to shift priorities quickly without compromising deadlines or quality.
• Proactive problem-solving skills.
• Excellent clerical skills and strong command of grammar, spelling, and punctuation.
• Exceptional attention to detail and ability to work independently.
• Intermediate or advanced proficiency with Microsoft Word, Excel, and PowerPoint.
• Ability to perform all essential duties.

Physical and Work Environment Requirements

• Extensive use of computer and telephone; use of printing, copying, faxing, and scanning equipment.
• Occasionally required to sit, stand, talk, see, and hear.
• Ability to communicate effectively, verbally and in writing, with a diverse group of people.
• May be exposed to weather conditions while traveling.
• Noise level in the work environment is usually moderate.

Compensation and Benefits

• Paid time off
• Health insurance
• Vision and dental insurance
• 401(k) plan with employer match
• Life insurance
• Additional benefits available

Location

Remote and hybrid remote/in-person work arrangements will be considered.

Additional Information

Candidates must have permanent authorization to work in the United States.