Senior Paralegal-Trademark

New York, NY

Summary
The Senior Paralegal – Trademark is an integral part of the Firm’s Legal Professional and Paralegal (LPP) Committee team and will be responsible for managing and leading all supportive aspects for cases or transactions for the Trademark Prosecution team, while conducting pre-screening trademark searches, analyzing full trademark searches, and drafting opinion letters regarding the risks and availability of mark(s) for use and registration. This role will be located in either our New York, San Diego, or Orange County office. Please note that this role may be eligible for a flexible working schedule that allows for a hybrid and in-office presence.

Responsibilities & Qualifications
• Handling all aspects of U.S. trademark prosecution and maintenance, including maintenance of files, preparation and filing of applications, preparation and filing of Office Action responses, ITU-related documents (e.g., Statements of Use, Extension requests), and Post Registration documents (e.g., Sections 8 & 15 Affidavits, renewals)
• Overseeing the filing and maintenance of international trademark applications and registrations, including maintenance of files, reviewing correspondence from foreign counsel and drafting responses to the same, obtaining and providing foreign counsel with information/documentation necessary to prosecute/maintain trademark applications, and registrations
• Preparing Assignments of trademark registrations and applications and filing them with the PTO Assignment Branch
• Investigating possible infringement and drafting cease and desist letters
• Preparing and filing Copyright applications with the U.S. Copyright Office
• Protecting and maintaining any highly sensitive, confidential, privileged, financial, and/or proprietary information that the Firm retains

We’d love to hear from you if you
• Exhibit knowledge of and familiarity with, trademark laws and procedures worldwide
• Demonstrate proficient knowledge of internal software applications, such as word processing, internet searching skills, spreadsheets, and databases
• Possess knowledge of MS Office applications, specifically MS Word, MS Excel, and MS Outlook

And have
• A bachelor’s degree (and signed declaration if located in a California office) or paralegal certificate from an ABA-approved program
• A minimum of six (6) years of relevant experience
• A minimum of three (3) years of trademark paralegal experience, preferably
• Experience with all aspects of USPTO trademark work (prosecution, maintenance, and renewals) as well as TTAB proceedings (oppositions and cancellations)

$130,000.00-$180,000.00, plus overtime and bonus

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