Premier law firm: [to be disclosed]
Job title: Trademark Paralegal
Practice group: Intellectual Property
Division focus: Trademark Prosecution
Additional: Strong Bonuses + Benefits
Job type: Full-Time, Non-Exempt + Hybrid
***Send resumes to: Hayley.christina@capstonesp.com
The Opportunity
Are you passionate about intellectual property? Join our dynamic team and play a pivotal role in managing trademark portfolios, handling trademark clearance, and driving U.S. and foreign trademark prosecution.
Must-Haves
- Proven experience in U.S. and foreign trademark prosecution, maintenance, and renewal.
- Bachelor’s Degree, Paralegal Certificate, OR significant experience in lieu of a degree.
- Strong knowledge of trademark clearance databases and research tools like PATTSY, Saegis, Lexis/Nexis, and Westlaw.
Job Description
- Trademark Prosecution & Maintenance: Prepare and file documents with the USPTO, including applications, office action responses, extensions, statements of use, affidavits, renewals, assignments, and powers of attorney.
- Global Coordination: Work closely with foreign counsel on trademark applications and registrations, ensuring compliance with international requirements.
- Client Communication: Maintain constant communication with clients and foreign counsel regarding clearance, filing instructions, office actions, and potential conflicts.
- Trademark Clearance & Searches: Conduct preliminary and comprehensive searches using third-party platforms and common law databases.
- Infringement & Enforcement: Assist with trademark enforcement, including potential oppositions, cancellations, and cease & desist letters.
- Litigation Support: Provide crucial litigation support, gathering and organizing evidence for in-house attorneys and external counsel.
- Database Management: Enter and update data in the trademark database (PATTSY), generating reports as needed.
- Cost Estimates: Prepare cost estimates for new filings.
- Customs Registrations: Prepare and file customs registrations and renewals with the U.S. Customs and Border Patrol.
- Ownership Documentation: Prepare and record ownership and change of name documents related to trademarks.
- Due Diligence: Conduct thorough due diligence on trademark portfolios.
- Monitoring & Deadlines: Assist with monitoring attorney dockets, managing deadlines, and recording billable hours accurately.