Premier law firm: to be disclosed
Job title: Trademark Paralegal
Practice group: Intellectual Property
Division focus: Trademark Prosecution
Compensation: $100000$130000
Additional: Strong Bonuses Benefits
Job type: FullTime NonExempt Hybrid
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The Opportunity
Are you passionate about intellectual property Join our dynamic team and play a pivotal role in managing trademark portfolios handling trademark clearance and driving U.S. and foreign trademark prosecution.
MustHaves
- Proven experience in U.S. and foreign trademark prosecution maintenance and renewal.
- Bachelors Degree Paralegal Certificate OR significant experience in lieu of a degree.
- Strong knowledge of trademark clearance databases and research tools like PATTSY Saegis Lexis/Nexis and Westlaw.
Job Description
- Trademark Prosecution & Maintenance: Prepare and file documents with the USPTO including applications office action responses extensions statements of use affidavits renewals assignments and powers of attorney.
- Global Coordination: Work closely with foreign counsel on trademark applications and registrations ensuring compliance with international requirements.
- Client Communication: Maintain constant communication with clients and foreign counsel regarding clearance filing instructions office actions and potential conflicts.
- Trademark Clearance & Searches: Conduct preliminary and comprehensive searches using thirdparty platforms and common law databases.
- Infringement & Enforcement: Assist with trademark enforcement including potential oppositions cancellations and cease & desist letters.
- Litigation Support: Provide crucial litigation support gathering and organizing evidence for inhouse attorneys and external counsel.
- Database Management: Enter and update data in the trademark database (PATTSY) generating reports as needed.
- Cost Estimates: Prepare cost estimates for new filings.
- Customs Registrations: Prepare and file customs registrations and renewals with the U.S. Customs and Border Patrol.
- Ownership Documentation: Prepare and record ownership and change of name documents related to trademarks.
- Due Diligence: Conduct thorough due diligence on trademark portfolios.
- Monitoring & Deadlines: Assist with monitoring attorney dockets managing deadlines and recording billable hours accurately.
Required Experience:
Senior IC