Premier law firm : [to be disclosed]
Job title : Trademark Paralegal
Practice group : Intellectual Property
Division focus : Trademark Prosecution
Compensation : $100,000-$130,000
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.
Salary : $100,000 - $130,000
