Trademark Paralegal

Overview

A global law firm is seeking a Trademark Paralegal to join their Global Trademark and Brand Management Team. This position is available in the Denver, Washington D.C., or Orange County, CA offices and offers the option to work remotely. The role reports to the Assistant Director of Global Trademark and Brand Management.

Responsibilities

• Manage a full docket of trademark-related deadlines, sending timely reminders to clients and attorneys to ensure deadlines are met
• Conduct in-house trademark screening searches using TESS, SAEGIS, Corsearch, and WIPO Global Brand Database
• Prepare and file U.S. trademark applications, renewal applications, non-substantive office action responses, use declarations, extensions of time, and other USPTO filings
• Prepare and file international trademark applications and extensions of international registrations with the World Intellectual Property Office (WIPO)
• File Uniform Domain Name Dispute Resolution Policy (UDRP) complaints with the Forum and WIPO
• Record documents such as assignments, name changes, and lien releases with the USPTO’s Assignment Recordation Branch
• File documents with the Trademark Trial and Appeal Board and prepare non-substantive procedural filings for the Board
• Communicate professionally and accurately with clients to collect information and instructions related to trademark searches and filings
• Instruct and supervise trademark prosecution and enforcement matters handled by foreign law firms; coordinate preparation, execution, notarization, legalization, and apostille of documents filed with international trademark offices
• Investigate infringing uses of trademarks
• Intake client requests for searches and filings and coordinate attorney handling of matters
• Create customized trademark records reports for clients
• Support client development activities

Requirements

Skills & Competencies

• Broad understanding of the USPTO’s Trademark Electronic Application System (TEAS) and experience preparing and filing various trademark prosecution and maintenance documents
• Experience with the USPTO’s Electronic System for Trademark Trials and Appeals (ESTTA) and filing trademark appeal and opposition/cancellation documents
• Strong organizational, time management, project management, communication, and timekeeping skills
• Ability to create technically proficient written communications without typographical errors
• Proficiency with technologies common in trademark and brand management
• Excellent customer service skills

Education & Experience

• Bachelor’s Degree required; Certificate in Paralegal Studies from an accredited institution preferred; equivalent experience considered
• Certified Paralegal designation is a plus
• Minimum of 7 years’ experience as a trademark paralegal at a law firm or 5 years’ experience as a trademark professional

Technology

• Proficiency with Windows-based software, Microsoft Word, Excel, Outlook, and other informational databases

Compensation & Benefits

• Hourly pay range: $40.86 to $49.03, adjusted based on experience, location, and other job-related factors
• Full-time employees may be eligible for discretionary bonuses
• Benefits include health insurance with optional HSA, short-term and long-term disability, dental and vision insurance, life insurance, Healthcare and Dependent Care Flexible Spending Accounts, 401(k), vacation, sick time, and employee assistance program
• Additional voluntary programs: accident insurance, life insurance, disability insurance, critical illness and cancer insurance, and pet insurance
• Commuter and transit programs may be available in certain markets

Location

This role is based in Denver, Washington D.C., or Orange County, CA, with remote work options available.