Trademark Paralegal

Overview

• The Trademark Paralegal will manage global trademark portfolios for clients in a dynamic and fast-paced environment.
• Conduct pre-screening trademark searches and assist in preparing U.S. trademark applications and related documents.
• Collaborate with corporate teams on due diligence matters and provide trademark support and guidance.
• Ensure compliance with U.S. Patent and Trademark Office and WIPO trademark rules and procedures.
• Work closely with partners and teams across offices to manage trademark prosecution activities.
• Handle confidential information with discretion and maintain ethical standards.
• Flexibility to work overtime and travel as needed to meet business and client needs.
• Position involves extensive client contact and interaction, ensuring successful management of trademark matters.

Key Responsibilities & Duties

• Conduct pre-screening trademark searches using tools like Corsearch and SAEGIS.
• Assist in filing U.S. trademark applications, statements of use, extensions, affidavits, and renewal applications.
• Manage global trademark portfolios, including U.S. and foreign trademark prosecution and maintenance.
• Correspond with foreign associates and ensure compliance with international trademark procedures.
• Utilize trademark docketing systems like Foundation IP to track and manage portfolios.
• Collaborate with teams to synthesize and communicate complex data effectively.
• Provide guidance and support for trademark prosecution activities and due diligence matters.
• Ensure accuracy and attention to detail in all tasks and documentation.

Job Requirements

• Bachelor’s degree required; ABA-approved Paralegal Certificate preferred.
• Minimum of 5 years of experience as a Trademark prosecution paralegal; 7 years preferred.
• Proficiency in Microsoft Office programs, including Word, Outlook, Excel, and PowerPoint.
• Knowledge of U.S. Patent and Trademark Office and WIPO trademark rules and procedures.
• Experience with trademark screening tools like Corsearch or SAEGIS and docketing systems like Foundation IP.
• Ability to handle confidential information and maintain ethical standards.
• Flexibility to work overtime and travel as needed to meet business and client needs.
• Strong communication skills and ability to work collaboratively in a team setting.