Required Skills & Experience

-A college degree and/or paralegal certificate is required

-4+ years of experience as a trademark paralegal is required

-Stellar project management and organizational skills

-Great attention to detail and ability to multitask

-Good judgment, intuition and problem-solving skills

-Strong written and verbal communication skills

-Reliable and dependable

-Client-focused mindset

-Professional and composed under pressure and in fast-paced environments

-Ability to learn quickly and work effectively and efficiently with clients, attorneys and staff across offices

Proficiency in WebTMS and filing with USPTO

-Knowledge of U.S. and international trademark prosecution rules and procedures

-Ability and willingness to work overtime as needed

Job Description

As a Trademark Paralegal, you’ll support some of the most innovative companies in tech and life sciences, helping protect the brands behind breakthrough technologies. You’ll work on cutting-edge matters in a fast-paced, collaborative environment at a firm known for its deep IP expertise and commitment to clients shaping the future. Duties include the below:

-Communicate with attorneys and clients regarding trademark clearance, prosecution, deadlines, renewals, and maintenance matters

-Prepare and send client communications, reports, and trademark status updates (quarterly or upon request)

-Coordinate with clients to collect supporting documents, signed forms, and specimens

-Review marketing materials and websites for acceptable trademark specimens

-Conduct preliminary trademark clearance searches using USPTO, commercial databases (e.g., SAEGIS, TrademarkNow), AI tools, and foreign trademark office resources

-Order and track comprehensive trademark searches from vendors

-Prepare, file and maintain applications and registrations before the USPTO (Sections 8, 9, 15; Statements of Use; Renewals; Extensions; Assignments; POAs)

-Draft and file non-substantive responses to Office Actions for attorney review

-Report USPTO and foreign office notices (e.g., publication, allowance) to clients

-Communicate with foreign counsel regarding searches, filings, prosecution, and maintenance

-Assist in planning and executing global trademark registration strategies

-Coordinate legalization of documents and obtain signatures for foreign trademark filings

-Manage deadlines and docket items for U.S. and foreign applications and registrations, and maintain accurate records in WebTMS

-Prepare and manage trademark watch notices and subscriptions

-Oversee file transfers (intake and outbound), including docket and document reviews

-Assist with preparing and filing TTAB actions (oppositions, cancellations, appeals) and UDRP complaints; gather supporting materials for enforcement proceedings

-File and prosecute U.S. copyright applications; assist with copyright assignment documentation

-Assist clients with U.S. Customs and Border Protection trademark recordation

-Perform related duties as assigned or directed by supervisor

-Maintain compliance with all firm policies and procedures

Insight Global

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Trademark Paralegal