Intellectual Property Paralegal
Summit Staffing Partners
New York, NY 10261, USA
6/14/2022
Legal
Full Time
Job Description
Trademark / IP Paralegal
Full-Time, Permanent Role with Top-Tier Private Equity & Brand Management Firm
Midtown Manhattan, NYC
Our client, a top-tier private equity and brand management firm based in Midtown Manhattan, is seeking an experienced Intellectual Property Paralegal with a strong focus on trademarks to join its expanding in-house legal department. This is a full-time, permanent position offering excellent benefits and phenomenal long-term growth potential within one of the most prestigious firms in the space.
The ideal candidate will bring hands on experience in trademark law and familiarity with broader intellectual property matters in a global, fast-paced legal environment.
Key Responsibilities:
- Manage and docket trademark matters using CPI trademark database while assisting attorneys with U.S. trademark prosecution and maintenance
- Coordinate international trademark matters through foreign counsel, including Powers of Attorney and Legalization procedures
- Oversee opposition and cancellation proceedings, gather evidence, and prepare detailed reports on trademark statuses
- Prepare and record name changes and assignments, conduct trademark searches, and review watch notices
- Approve invoices, assist with due diligence for acquisitions, and review licensing agreements and contracts
- Develop and implement best practices for trademark portfolio management and maintenance processes
- Collaborate with internal business units and external counsel to ensure alignment on global trademark strategies and brand protection efforts
- Analyze and advise on complex trademark clearance, prosecution, and enforcement matters
- Train junior paralegals and other team members on trademark procedures and system updates
- Monitor and ensure compliance with filing deadlines and renewal requirements in domestic and international jurisdictions
- Prepare detailed trademark portfolio analyses and reports for senior leadership and stakeholders
Candidate Profile
- Minimum of 2 years of experience in a law firm or corporate legal department with extensive expertise in U.S. and international trademark prosecution, PTO rules, forms, and CPI or similar trademark docketing software
- Advanced experience managing global trademark portfolios, foreign counsel relationships, and opposition and cancellation proceedings
- Strong organizational and project management skills, with the ability to prioritize and manage multiple tasks in a fast-paced environment
- Proficiency in Microsoft Word and Excel, with familiarity with other trademark management and document review tools
- Exceptional communication skills to effectively interact with internal stakeholders, external counsel, and international partners
- Detail-oriented with the ability to analyze complex trademark issues and provide actionable insights
- Prior exposure to broader IP-related matters (e.g., copyright or brand protection strategies) is a plus
- Must be or willing to become a Notary Public in the State of New York