Trademark Paralegal

Published March 25th, 2024

Responsibilities:

  • Prepare and file U.S. trademark prosecution and maintenance documents electronically with the USPTO.
  • Conduct trademark screening searches and common law searches.
  • Correspond with clients regarding routine trademark prosecution and maintenance matters.
  • Prepare and file trademark documents with WIPO for International Registration.
  • Work with foreign counsel for trademark prosecution and maintenance outside the U.S.
  • Prepare ownership and change of name documents related to trademarks.
  • Conduct due diligence on trademark portfolios.
  • Prepare and file customs registrations and renewals with U.S. Customs and Border Patrol.
  • Assist with trademark enforcement matters, including oppositions, cancellations, and cease & desist letters.
  • Monitor attorney dockets and manage deadlines.
  • Record billable hours accurately and timely.
  • Perform other duties as necessary based on practice/client needs.

Job Qualifications:

  • Experience in trademark prosecution, maintenance, and renewal preferred.
  • Bachelor’s Degree in the legal industry or Legal Assistant Certificate from an ABA approved institution.
  • Proficient in Word, Excel, and ability to learn other department applications quickly.
  • Strong internet research skills including trademark clearance databases and investigations.
  • Experience with trademark docketing software and legal research tools preferred.
  • Excellent communication skills for internal and external interactions.
  • Ability to multitask independently in a fast-paced environment.
  • Problem-solving skills with a high level of discretion and responsibility.
  • Strong organizational, analytical, and writing skills.
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