Job Title: Trademark Paralegal
Job Responsibilities:
- Manage a comprehensive docket of trademark-related deadlines, ensuring timely reminders and handling of deadlines for clients and attorneys.
- Conduct in-house trademark screening searches using TESS, SAEGIS, Corsearch, and the WIPO Global Brand Database.
- Prepare and file . trademark applications, renewal applications, non-substantive office action responses, use declarations, extensions of time, and other USPTO filings.
- Prepare and file international 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 trademark enforcement matters handled by foreign law firms, coordinating the 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, coordinating attorney handling of matters.
- Create customized trademark records reports for clients.
- Support client development activities.
Education and Experience Information:
- Bachelor’s Degree required, with a Certificate in Paralegal studies from an accredited institution preferred; equivalent experience considered.
- Certified Paralegal status is a plus.
- Minimum of seven years’ experience as a trademark paralegal at a law firm or five years’ experience as a trademark professional.
Skills & Competencies:
- Broad understanding of the USPTO’s Trademark Electronic Application System and the preparation and filing of various trademark prosecution and maintenance documents via TEAS.
- Experience with the USPTO’s Electronic System for Trademark Trials and Appeals (ESTTA) and filing various types of trademark appeal and opposition/cancellation documents.
- Effective organizational, time management, project management, communication, and timekeeping skills.
- Ability to create technically proficient written communications without typographical errors.
- Proficiency with various technologies common in trademark and brand management.
- Excellent customer service skills.
- Proficiency with Windows-based software and Microsoft Word, Excel, Outlook, and other informational databases required.
Salary Information:
- The text does not provide specific salary information.
The law firm is an EEO employer committed to an inclusive workplace, merit-based consideration, and review without regard to an individual’s race, sex, or other protected characteristics, adhering to the principles of non-discrimination on any protected basis.
