Trademark Paralegal

Hartford, Connecticut (US)
$80,000 to $95,000
Sep 27, 2023
Oct 20, 2023
Contract Type

Hybrid Position in Boston, Stamford, Hartford or NYC


  • Manage all phases of routine U.S. and foreign trademark prosecution.
  • Assist with the preparation and filing with the U.S. Patent and Trademark Office of U.S. trademark applications, Office Action Response, Statements of Use, Section 8 & 15 Affidavits, Renewals, and related documents.
  • Assess acceptable specimens of use for submission to the USPTO
  • Assist with copyright and domain matters.
  • Assist with the management of U.S. and foreign opposition/cancellation actions and other enforcement efforts.
  • Manage trademark docket and provide support and reminders to attorneys; manage and participate in regular docket meetings with attorneys.
  • Conduct preliminary trademark clearance searches online and PTO website.
  • Participate in trademark filing strategy discussions.
  • Oversee U.S. and foreign assignment recordation projects as needed.
  • Assist in preparation and filing of UDRP and TTAB actions.
  • Liaise with foreign agents regarding foreign filing requirements for trademark prosecution and maintenance.
  • Prepare reporting and instruction letters to clients.
  • Create Trademark Status Charts as necessary.
  • Conduct regular status checks on trademark portfolios to keep matters moving forward.

Requirements / Abilities

  • Minimum of five years of experience as a Trademark Paralegal in a law firm or corporate setting.
  • Strong interpersonal skills; must have clear and concise verbal and written communication skills and be able to receive and provide information with courtesy and tact.
  • Ability to follow instructions effectively from a diverse group of clients, attorneys, and entire trademark team, and be able to multitask and work independently.
  • Strong analytical and reasoning skills; Intuitive problems solver and ability to identify and suggest solutions to challenging issues.
  • Strong organizational skills and attention to detail, and the ability to prioritize and work well under pressure, juggle multiple tasks, and meet deadlines.
  • Follow through on assignments to completion.
  • Highly motivated, positive and resilient attitude, ability to work independently and within a collaborative team environment.
  • Ability to work efficiently in a virtual environment. Familiarity with Madrid Protocol and WIPO filing rules and processes.


Minimum Qualifications/Requirements:

Bachelor’s Degree and/or 5 to 10 years of relevant and successful experience as a Trademark paralegal.

Computer skills: Proficient in Outlook, Word, Excel, iManage or other document management system, knowledge of trademark docketing systems, experience with the USPTO websites.

Salary is negotiable for the right person