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
