Trademark Paralegal Job Description
A leading business law firm is seeking an experienced Trademark Paralegal for one of the following locations: Washington D.C., Grand Rapids, Ann Arbor, Bloomfield Hills, or Chicago. The firm is recognized as one of the Best and Brightest Places to Work, reflecting its commitment to recruiting top talent.
The Trademark Paralegal will be responsible for managing trademark portfolios, handling U.S. and foreign trademark prosecution, and assisting with contentious matters. The role involves heavy client communication, coordination with foreign counsel, and managing multi-jurisdictional filing programs.
Responsibilities include:
- Preparing and filing U.S. and foreign trademark applications, office actions, renewals, and assignments.
- Conducting and analyzing preliminary and comprehensive trademark searches, including online investigations.
- Managing trademark enforcement efforts, including assisting with oppositions, cancellations, and cease & desist letters.
- Corresponding with clients and foreign counsel on prosecution matters.
- Managing trademark databases, including updating PATTSY and generating reports.
- Assisting with litigation support, including gathering and organizing evidence.
- Handling customs registrations with U.S. Customs and Border Patrol.
- Conducting due diligence on trademark portfolios and preparing cost estimates for filings.
- Ensuring timely and accurate recording of billable hours.
Job Qualifications:
- Experience in U.S. and foreign trademark prosecution, maintenance, and renewal.
- Bachelor’s degree or Legal Assistant Certificate from an ABA-approved institution (extensive experience may substitute for a degree).
- Proficiency in Word, Excel, and trademark research tools like Saegis, Lexis/Nexis, Westlaw.
- Experience with trademark databases, especially PATTSY (or similar docketing software).
- Strong communication skills to interact with internal teams, clients, and foreign associates.
- Ability to multitask in a fast-paced environment, maintain confidentiality, and follow instructions with minimal oversight.
- Excellent organizational and writing skills (a writing sample may be requested).
This position offers the chance to grow within a highly respected firm known for its collaborative and professional environment.
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