Trademark Paralegal

Overview

• Support trademark attorneys in managing the firm's trademark portfolio and ensuring compliance with USPTO regulations.
• Conduct trademark clearance searches and provide recommendations based on findings.
• Assist in filing and prosecuting trademark applications in domestic and international jurisdictions.
• Maintain accurate records of trademark filings, renewals, and correspondence.
• Prepare responses to office actions and other USPTO communications.
• Coordinate with clients and foreign counsel regarding trademark filings and updates.
• Provide technical support for trademark and patent searches using commercial databases.
• Stay updated on changes in trademark laws and practices to ensure compliance.
• Assist in IP litigation and enforcement matters, including evidence preparation and correspondence.

Key Responsibilities & Duties

• Prepare, file, and prosecute trademark applications with the USPTO and foreign jurisdictions.
• Track deadlines and monitor renewal dates for trademark registrations and applications.
• Draft and file responses to office actions and opposition notices.
• Conduct prior art searches for trademarks and patents using commercial databases.
• Maintain and update patent databases and monitor portfolio deadlines.
• Prepare and maintain technical reports for trademark clearance and patentability assessments.
• Manage trademark docketing and ensure deadlines are met.
• Assist with training new paralegals or legal assistants in trademark procedures.
• Provide litigation support in trademark disputes, including evidence preparation and filings.

Job Requirements

• Bachelor’s degree in Paralegal Studies or related field; certification preferred.
• 3-5 years of experience as a trademark paralegal, with USPTO familiarity.
• Proficiency in Microsoft Office Suite and trademark docketing software.
• Strong organizational skills and ability to manage multiple tasks simultaneously.
• Knowledge of international trademark filing procedures and patent databases.
• Experience with IP management platforms like CPI or Anaqua.
• Excellent written and verbal communication skills.
• Ability to maintain confidentiality and handle sensitive information.
• CPI certification or willingness to obtain is highly desirable.