Trademark Paralegal

Description

Primary Responsibilities

• Conduct trademark and IP-related searches using U.S. and foreign IP office databases (patent, trademark, copyright) to identify ownership, lienholders, and record relevant documents.
• Prepare and file U.S. trademark prosecution documents with the USPTO, including, applications, responses to office actions, statements of use, extension requests, requests to divide, and post-refusal submissions.
• Prepare and file trademark documents with WIPO, including applications for International Registration, responses to Notices of Irregularity, renewals, assignments, and powers of attorney.
• Coordinate with foreign counsel on the prosecution and maintenance of trademark applications/registrations outside of the United States, including attending to notarization and legalization of documents.
• Prepare and record ownership and change of name documents related to trademarks.
• Assist with trademark enforcement matters, including working with and corresponding foreign counsel regarding potential oppositions, cancellations, and cease & desist letters.
• Conduct online research relating to trademark, copyright, and advertising matters; domain name disputes; and unfair competition.
• Support with trademark disputes, including oppositions and infringement claims.
• Assist with the management of trademark portfolios, including tracking deadlines and renewals.
• Maintain professional and confidential client communications.

Qualifications

• Bachelor’s degree, preferably in Social Sciences, Pre-Law, English, or a related field.
• Minimum of 3 years of direct experience filing with the Trademark division of the USPTO.
• Working knowledge of intellectual property and corporate law, including security interests in IP.
• Experience with filing and searching for information in the USPTO and the U.S. Copyright Office.
• Strong writing and communication skills, with the ability to draft clear, concise correspondence.
• Experience conducting online searches using major search engines and global trademark databases.
• Excellent organizational skills with superb attention to detail.
• Proficiency in Microsoft Word, Excel, and Access (including data entry and report generation).
• Ability to work collaboratively and a commitment to continuous professional development.