Senior Trademark Paralegal

Company : Capstone Search Partners

Job Type : Full Time

United States

Job Description - Senior Trademark Paralegal

Premier law firm: [to be disclosed]

Job title: Trademark Paralegal

Practice group: Intellectual Property

Division focus: Trademark Prosecution

Additional: Strong Bonuses + Benefits

Job type: Full-Time, Non-Exempt + Hybrid

***Send resumes to: [email protected]

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.

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Senior Trademark Paralegal

Job Description - Senior Trademark Paralegal

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