Trademark Paralegal

Capstone Search Partners

  • Charlotte, New York
  • 30+ days ago

    Highlights

    Job title: Trademark Paralegal Practice group: Intellectual Property Compensation: $80,000-$110,000/per year Additional: Strong Bonuses + Benefits Job type: Direct-Hire, Full-Time & Non-Exempt ***Send resumes to: Hayley.christina@capstonesp.com 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.

    Numbers & Facts

    LocationCharlotte, New York

    Description

    Job title: Trademark Paralegal
    Practice group: Intellectual Property 
    Compensation: $80,000-$110,000/per year
    Additional: Strong Bonuses + Benefits
    Job type: Direct-Hire, Full-Time & Non-Exempt 
     
    ***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.
     
    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 databases.
    • Infringement & Enforcement: Assist with trademark enforcement, including potential oppositions, cancellations, and c&d letters.
    • 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.
    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.
     

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