Trademark Paralegal

Role Overview

• Manages a full docket of trademark-related deadlines
• Conducts in-house trademark screening searches on the TESS, SAEGIS, Corsearch, and WIPO Global Brand Database
• Prepares and files U.S. trademark applications, renewal applications, non-substantive office action responses, use declarations, extensions of time, and other USPTO filings
• Prepares and files international applications and extensions of international registrations with WIPO
• Files UDRP complaints with the Forum and WIPO
• Records documents with the USPTO’s Assignment Recordation Branch
• Files documents with the Trademark Trial and Appeal Board and prepares non-substantive procedural filings
• Communicates with clients to collect information and instructions
• Instructs and supervises trademark prosecution and enforcement matters handled by foreign law firms
• Investigates infringing uses of trademarks
• Creates customized trademark records reports for clients

Requirements

• Bachelor’s Degree required
• Certificate in Paralegal studies from an accredited institution preferred; equivalent experience considered
• Certified Paralegal a plus
• Minimum of 7 years’ experience as a trademark paralegal at a law firm or five years’ experience as a trademark professional
• Proficiency with Windows-based software and Microsoft Word, Excel and Outlook, and other informational databases

Benefits

• Discretionary bonus
• Health insurance with optional HSA
• Short term disability
• Long term disability
• Dental insurance
• Vision care
• Life insurance
• Healthcare Flexible Spending Accounts
• Dependent Care Flexible Spending Accounts
• 401K
• Vacation
• Sick time
• Employee assistance program
• Voluntary accident insurance
• Voluntary life
• Voluntary disability
• Voluntary critical illness and cancer insurance
• Pet insurance
• Commuter and Transit programs in certain markets