Senior Trademark Paralegal

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.

Must-Haves

1. Proven experience in U.S. and foreign trademark prosecution, maintenance, and renewal.
2. Bachelor’s Degree, Paralegal Certificate, OR significant experience in lieu of a degree.
3. Strong knowledge of trademark clearance databases and research tools like PATTSY, Saegis, Lexis/Nexis, and Westlaw.

Job Description

1. 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.
2. Global Coordination: Work closely with foreign counsel on trademark applications and registrations, ensuring compliance with international requirements.
3. Client Communication: Maintain constant communication with clients and foreign counsel regarding clearance, filing instructions, office actions, and potential conflicts.
4. Trademark Clearance & Searches: Conduct preliminary and comprehensive searches using third-party platforms and common law databases.
5. Infringement & Enforcement: Assist with trademark enforcement, including potential oppositions, cancellations, and cease & desist letters.
6. Litigation Support: Provide crucial litigation support, gathering and organizing evidence for in-house attorneys and external counsel.
7. Database Management: Enter and update data in the trademark database (PATTSY), generating reports as needed.
8. Cost Estimates: Prepare cost estimates for new filings.
9. Customs Registrations: Prepare and file customs registrations and renewals with the U.S. Customs and Border Patrol.
10. Ownership Documentation: Prepare and record ownership and change of name documents related to trademarks.
11. Due Diligence: Conduct thorough due diligence on trademark portfolios.
12. Monitoring & Deadlines: Assist with monitoring attorney dockets, managing deadlines, and recording billable hours accurately.