Trademark Paralegal

New York
May 24, 2023
Jun 21, 2023
Contract Type

Trademark Prosecution Paralegal– Onsite– NYC

Primary Responsibilities

:Prepare trademark filings in the USPTO and TTAB including Application and Maintenance forms, Assignments and Notices of Opposition; file state trademark applications in several US states; report filings to clients
Draft legal documents for attorney review, including C&D letters, settlement agreements and Notices of Opposition
Instruct and manage foreign trademark filing programs, maintenance and searches
Report US and foreign trademark deadlines to clients and follow up as necessary; arrange signature and notarization of POAs
• Day–to–day management of global trademark portfolios for a diverse and expansive clientele.
• Preparation, filing, both nationally and via the Madrid Protocol, including handling assignments.
• Conduct trademark research, searching, and reporting using databases.
• Conduct preliminary trademark knockout searches, and assisting with clearance searches.
• Correspond directly with clients, attorneys, and foreign associates.
• Provide support to attorneys on infringement, opposition, cancellation and invalidation actions as well as other enforcement cases, including research, evidence collection, reviews of watch notices and draft affidavits.
• Participation in special projects as needs arise, including assisting with firm training, developing policies and guidelines, and any other necessary undertakings for promoting high quality, effective service for clients.

• A minimum of 5 years' experience in the trademark group of a law firm or in–house
• Four–year college degree
• Strong proficiency with Microsoft Office application (Word, Excel, Outlook)
• Experience handling a broad range of international trademark issues, including familiarity with the Madrid System.
• Experience with IP management software services (WebTMS preferred)
• Proficient organizational skills and attention to detail, in order to effectively prioritize a high–volume workload with numerous statutory deadlines in a broad range of global jurisdictions.
• Strong writing and analytical skills, with the ability to understand and succinctly convey complex ideas.
• Comfortable working autonomously on tasks, while also exercising judgement to escalate matters when necessary.
• Strong team player who values collaboration and communication across the firm.
• Foreign language skills preferred, but not required.
• Flexibility to work overtime
Salary 100k–130k: Hrs 9:30am –5:30pm