Job Description
Job Description
A well-established law firm is seeking a Trademark Paralegal to join its Intellectual Property team in New York. This role involves assisting with trademark due diligence, filing documents with the USPTO, and monitoring deadlines. The ideal candidate has at least five years of relevant experience in a law firm or corporate legal department.
Responsibilities:
Prepare documents for attorney review and USPTO filing, including Applications, Office Action Responses, Declarations of Use and Incontestability, Applications for Renewal, and Extensions of Time to Oppose.
Draft identifications of goods and services and identify appropriate specimens.
Conduct and review trademark searches and prepare preliminary summaries.
Manage execution and legalization of documents.
Review investigative summaries and prepare reports and recommendations.
Correspond with foreign associates regarding trademark matters, including searches, filings, oppositions, registration maintenance, and transfers.
Communicate with clients regarding trademark maintenance requirements.
Assist with trademark due diligence, prepare and record assignments, and handle chain-of-title activities related to corporate transactions.
Monitor watch notices, track deadlines, and coordinate with the docketing team.
Support trademark opposition, cancellation, and other trademark disputes.
Process invoices from foreign associates and other vendors.
Requirements:
Bachelor's degree or Paralegal Certificate preferred.
Minimum of five years of experience in a law firm or corporate legal department handling USPTO trademark work, including prosecution, maintenance, and renewals, as well as TTAB proceedings.
Proactive, dedicated, and detail-oriented with a positive attitude.
Strong written and oral communication skills.
Experience managing large trademark portfolios.
Proficiency in Microsoft 365 (Outlook, Word, Excel, and Teams), SAEGIS, and the USPTO TEAS system.
Ability to balance multiple deadlines in a fast-paced environment.
Excellent organizational and interpersonal skills.
Ability to work independently and collaboratively as part of a team.
Experience with domain names and advertising review is a plus.
This position offers an opportunity to work closely with a team of attorneys, a paralegal, and a legal practice assistant while supporting a dynamic Intellectual Property practice.