Trademark Paralegal

Overview

A law firm is seeking a Trademark Paralegal to join their Firmwide IP Services department. This remote position supports the trademark prosecution practice and reports to a Trademark Supervisor. Working hours are 8:00 AM to 5:00 PM Pacific Time.

Responsibilities

• Support trademark prosecution activities including preparation and filing of trademark and copyright applications with the USPTO and WIPO
• Prepare formality documents such as Assignments, Office Action Responses, Statements of Use, Affidavits of Use, Renewals, and related filings
• Handle TTAB filings, oppositions, and cancellations
• Correspond with non-US agents regarding foreign filings and related matters
• Communicate with clients about the status of trademark matters
• Process incoming files transferred to the firm
• Prepare client status and docket reports related to trademark prosecution
• Maintain accurate records including IP prosecution docket and document management system
• Conduct international and US preliminary trademark searches and assist in reviewing search reports
• Capture billable time in the firm’s timekeeping system
• Stay current with changes in Intellectual Property rules and regulations
• Provide excellent client service to internal and external clients

Requirements

• Associate’s degree or equivalent work experience
• Minimum of 10 years of trademark and copyright prosecution experience
• Deep understanding of Intellectual Property rules and regulations worldwide
• Experience with IP docketing systems
• Strong oral and written communication skills
• Proficiency with Microsoft Office Suite (Word, Excel) and Document Management Systems such as Net Docs
• Ability to work occasional overtime and weekends as needed

Skills and Abilities

• Effective interpersonal communication with clients, attorneys, and staff
• Ability to read and interpret legal and business documents
• Basic mathematical skills including addition, subtraction, multiplication, division, and calculating percentages
• Strong reasoning and problem-solving abilities
• Ability to multi-task, prioritize, and manage multiple projects with attention to detail
• Strong organizational, analytical, and planning skills
• Ability to work independently and collaboratively
• Project and team management experience
• Ability to work in a fast-paced environment with strict deadlines
• Discretion handling confidential and sensitive information
• Client service orientation and professionalism under pressure

Physical Demands

• Regularly required to sit, use hands to handle objects and input data, talk, and hear
• Frequently required to walk
• Occasionally required to stand, reach, stoop, kneel, bend, crouch, or crawl
• Ability to operate standard office equipment including computers, copiers, and fax machines
• Occasionally lift and/or move up to 25 pounds
• Specific vision abilities required include close vision, distance vision, peripheral vision, depth perception, and ability to adjust focus

Work Environment

• Moderate noise level
• Reasonable accommodations may be made for individuals with disabilities

Compensation and Benefits

• Expected annual salary range: $100,000 to $120,000, dependent on experience, education, geographic region, and skills
• Competitive salaries with performance bonus program
• Group health, dental, and vision insurance with multiple plan options
• Coverage begins on date of hire
• Same-sex domestic partner coverage
• Group term life/AD&D and voluntary supplemental life insurance
• Voluntary accident insurance for self and family
• Long-term care insurance
• Short-term and long-term disability benefits
• Pre-tax benefit programs including dependent care, health care reimbursement, and transit/qualified parking (in most cities)
• Voluntary 401(k) retirement plan
• Paid holidays (11 days)
• Parental leave and family care programs
• Wellness program

Location

Remote position with working hours from 8:00 AM to 5:00 PM Pacific Time.