Trademark Paralegal

Overview

The organization is seeking an experienced Trademark Paralegal to support its Atlanta-based office. This role will help manage and protect the organization’s U.S. and international trademark portfolio.

The Trademark Paralegal will be the primary point of contact between the organization and its outside trademark counsel, coordinating trademark matters, facilitating internal decision-making, and providing timely instructions to outside counsel. The ideal candidate will be proactive, detail-oriented, and able to independently manage day-to-day trademark portfolio activities while collaborating with legal, marketing, and business teams.

Responsibilities

• Assist internal and external legal teams with management of U.S. and international trademark portfolios, including:
  • Reviewing and maintaining accuracy of trademark files
  • Renewing and recording trademarks
  • Managing docket and deadlines
• Coordinate with marketing teams to obtain evidence of use and other supporting information for U.S. and global applications and renewals
• Communicate with external legal counsel to file and maintain trademark applications, renew registrations, and assist with responding to office actions
• Prepare and file use and renewal documents in USPTO
• Review trademark watch service reports and conduct preliminary research of potentially infringing marks
• Assist attorneys in drafting correspondence to clients regarding U.S. and international trademark prosecution events
• Support trademark search and clearance processes
• Assist with trademark due diligence projects
• Support trademark clearinghouse and domain name-related activities

Requirements

• Bachelor’s degree or completion of a paralegal program or equivalent experience with familiarity with Intellectual Property
• At least 3–5 years of substantive trademark paralegal experience
• Excellent oral and written communication skills and demonstrated analytical ability
• Ability to proactively problem-solve and exercise independent judgment and decision-making skills
• Excellent organizational skills, attention to detail, and ability to manage a large volume of detailed tasks
• Working knowledge of U.S. trademark prosecution and maintenance procedures, including:
  • Office actions
  • Statements of use
  • Declarations of continued use
  • Renewals
  • Opposition proceedings
• Familiarity with international trademark prosecution and maintenance, including the Madrid Protocol and coordination with foreign trademark counsel
• Proficient in relevant USPTO trademark systems, including:
  • Trademark Search
  • Trademark Center
  • Trademark Status and Document Retrieval system (TSDR)
  • Trademark Trial and Appeal Board (TTAB)
• Knowledge of Outlook, Microsoft Word, Office, Excel, PowerPoint, Corsearch, Saegis and CPi docket software
• Ability to work remotely while ensuring tasks are completed timely and efficiently, and maintain regular communication with the legal team

Location

Atlanta-based office support (with ability to work remotely)