Trademark Enforcement Paralegal (PERM)

• Bonuses are discretionary on a year-to-year basis, but employees usually do receive them. Start date determines eligibility.

Position Summary:

We are seeking an experienced, highly organized, and proactive Trademark Enforcement Paralegal with a strong background in U.S. and foreign trademark enforcement and working knowledge of trademark prosecution and filing. This role is enforcement-focused and requires the ability to independently manage enforcement initiatives, including monitoring, investigations, and disputes, while supporting prosecution needs as required.
The ideal candidate is detail-oriented, adaptable, and able to prioritize competing deadlines in a fast-paced environment. A collaborative, team-oriented approach is essential, as this role supports trademark partners, associates, and a team of experienced trademark paralegals.

Responsibilities:

Trademark Enforcement (Primary Focus):

• Manage and support domestic and international trademark enforcement efforts, including monitoring, domain name disputes, counterfeit reporting, online infringements, takedowns, and fraudulent use of trademarks and brand assets investigations, and infringement matters.
• Review trademark watch notices and analyze potential conflicts; prepare summaries and recommendations for attorney review.
• Support attorneys with cease-and-desist letters and related enforcement correspondence.
• Assist with the management and filing of TTAB proceedings, including oppositions and cancellations.
• Support enforcement strategy by gathering evidence of use, infringement, and priority.
• Prepare and assist with UDRP complaints and domain name enforcement matters.
• Coordinate with investigators, vendors, and foreign counsel on enforcement actions.
• Maintain enforcement tracking systems and status reports for client portfolios.

Trademark Prosecution & Portfolio Support (Required Knowledge):

• Manage routine aspects of U.S. and foreign trademark prosecution.
• Assist with preparation and filing of U.S. trademark applications, Office Action responses, Statements of Use, and maintenance filings (Sections 8, 15, and renewals).
• Assess specimens of use for USPTO compliance.
• Liaise with foreign associates regarding filings, deadlines, and requirements.
• Participate in docket management, including monitoring deadlines and attending docket meetings.
• Conduct preliminary trademark clearance searches.
• Assist with assignment recordations and portfolio maintenance projects.
• Prepare client reporting letters and trademark status summaries.

Requirements / Abilities

• Minimum of five (5) years of experience as a Trademark Paralegal, with significant exposure to trademark enforcement.
• Demonstrated experience handling enforcement matters, including domain name disputes, counterfeit reporting, online infringements, takedowns, and fraudulent use of trademarks online, and TTAB proceedings.
• Working knowledge of U.S. and international trademark prosecution processes.
• Strong analytical skills with the ability to assess risk and identify enforcement options.
• Excellent written and verbal communication skills, with the ability to draft clear, professional correspondence.
• Highly organized with strong attention to detail and the ability to manage multiple priorities under deadline pressure.
• Ability to work independently while collaborating effectively with attorneys and team members.
• Proactive, solutions-oriented mindset with strong follow-through.
• Comfortable working in a virtual environment.
• Familiarity with Madrid Protocol and WIPO procedures.

Minimum Qualifications/Requirements:

Bachelor's Degree and/or relevant and successful experience in the field of IP enforcement.

Computer skills:

Proficient in Outlook, Word, Excel, iManage or other document management system, knowledge of trademark docketing systems, experience with the USPTO, and global Intellectual Property websites.