Trademark Paralegal

Roseland, NJ

Summary

The Trademark Paralegal is responsible for supporting US and international trademark functions, including all aspects of trademark searching, clearance, prosecution, maintenance, and enforcement.

Requirements

• Conduct preliminary trademark clearance searches; conduct preliminary investigations of potentially conflicting marks; review comprehensive US trademark search reports and prepare first draft of analysis in form of email summaries and opinion letters.
• Experience with all USPTO search and electronic filing systems.
• Proficient with computerized trademark search databases, particularly Corsearch and Saegis platforms.
• Draft and file US trademark applications, including research and review of client materials, and prepare descriptions of goods and services for applications.
• Communicate with foreign counsel to file and maintain trademark applications, renew registrations, and respond to office actions.
• Coordinate with clients’ marketing teams to obtain evidence of use and other supporting information for US and global applications and renewals.
• Prepare and file use and renewal documents in USPTO.
• Review trademark watch service reports and conduct preliminary research of potentially infringing marks.
• Prepare draft responses to Office Actions for the USPTO and coordinate with foreign counsel to respond to refusals.
• Support TTAB proceedings and enforcement matters, including oppositions, cancellations, counterfeit programs, online takedowns, and customs recordations.
• Support transactional trademark matters, including M&A diligence, portfolio audits, chain-of-title remediation, and post-closing integration.
• Prepare draft form trademark assignments and conduct review of USPTO assignment abstracts to examine chain of title and lien status.
• Experience drafting copyright applications, reviewing copyright security interest agreements and conducting copyright searches and diligence a plus.
• Knowledge of WHOIS investigations, and UDRP/URS proceedings a plus.

Skills, Knowledge, and Abilities

• Bachelor’s degree and/or Paralegal Certificate.
• 4+ years of Paralegal experience in a law firm environment.
• Provide excellent client service by maintaining a positive and professional attitude and cooperative relationship with firm colleagues, as well as when interacting with external clients and contacts.
• Knowledge of pertinent USPTO trademark systems, including Trademark Electronic Search System (TESS), Trademark Electronic Application System (TEAS), Trademark Electronic Application System International (TEASi), Trademark Status and Document Retrieval system (TSDR), and Trademark Trial and Appeal Board (TTAB).
• Knowledge of WIPO International forms and search databases.
• Knowledge of Outlook, Microsoft Word, Office, Excel, PowerPoint, Corsearch, Saegis and CPi docket software.
• Excellent written and verbal communication skills and the ability to partner effectively with attorneys and clients.
• High level of attention to detail, judgment, and discretion in handling confidential matters.
• Ability to prioritize work for an active docket of matters and adjust priorities, as needed.
• Ability to exhibit flexibility and work in a fast-paced environment.
• Able to work remotely, as permitted, and ensure that tasks are completed timely and efficiently; maintain regular communication with attorneys and colleagues while working remotely. Able to follow firm policies and procedures while working remotely.
• Ability to coordinate multiple projects simultaneously.

Compensation: $85,000.00-$100,000.00, plus overtime and bonus

Their benefits package includes coverage options for medical, dental, vision, prescription drug, life insurance, disability, FSAs, 401K, and paid time off.

Disclaimers

This job description is not designed to cover or contain a comprehensive listing of all activities, duties, or responsibilities required by employee.

The firm is committed to equal employment opportunity and providing reasonable accommodations to applicants with physical and/or mental disabilities. We value and encourage diversity and solicit applications from all qualified applicants without regard to race, color, gender, sex, age, religion, creed, national origin, ancestry, citizenship, marital status, sexual orientation, physical or mental disability, medical condition, veteran status, gender identity, genetic information, or any other characteristic protected by federal, state, or local law.