Trademark Paralegal    

New York, NY

Summary

The Trademark Paralegal will assist in the day-to-day management of the firm’s trademark portfolio, working closely with trademark attorneys, clients, and other professionals. The individual will also utilize their expertise in patent information and databases to support IP filings, conduct searches, and maintain trademark records. This role demands a detail-oriented, organized, and knowledgeable individual with the ability to handle both the legal and technical aspects of trademark and patent information.

Responsibilities

• Assist in the preparation, filing, and prosecution of trademark applications with the U.S. Patent and Trademark Office (USPTO) and other foreign jurisdictions.
• Track deadlines and monitor renewal dates for trademark registrations and pending applications.
• Draft and file responses to office actions, notices of opposition, and other USPTO communications.
• Conduct trademark clearance searches and provide recommendations based on search results.
• Coordinate with clients and foreign counsel regarding trademark filings, renewals, and updates.
• Assist in the management of trademark licenses and assignments.
• Conduct prior art searches for trademarks and patents using commercial patent databases (e.g., USPTO, WIPO, EPO).
• Provide technical and patent search support to the legal team in assessing trademark applications or disputes.
• Maintain and update patent databases and monitor patent portfolio deadlines.
• Prepare and maintain technical reports for trademark clearance and patentability assessments.
• Draft, file, and maintain trademark-related legal documents, including licensing agreements, assignments, and consent letters.
• Maintain accurate and up-to-date records of all trademark filings, prosecution status, and correspondence.
• Review and summarize office actions and trademark litigation updates for attorneys.
• Prepare trademark prosecution status reports for clients.
• Prepare and manage trademark docketing, ensuring deadlines are met.
• Manage and organize trademark-related files, correspondence, and records in the firm’s document management system.
• Stay updated on changes in trademark laws, regulations, and practices.
• Assist in IP litigation and enforcement matters, including the preparation of evidence, filings, and correspondence related to trademark disputes.
• Assist with training new paralegals or legal assistants.

Qualifications

• Associate’s degree or higher in Paralegal Studies, or a related field.
• Certification as a Paralegal (e.g., NALA, NFPA) is preferred.
• CPI (Certified Patent Information) certification is highly desirable or willingness to obtain.
• A minimum of 3-5 years of trademark paralegal experience.
• Strong knowledge of USPTO rules and procedures and familiarity with international trademark filings.
• Familiarity with patent databases (e.g., PatBase, Google Patents, WIPO).
• Proficiency in Microsoft Office Suite (Word, Excel, Outlook).
• Experience with trademark docketing software and legal research tools.
• Strong attention to detail, organizational skills, and the ability to handle multiple tasks simultaneously.
• Excellent written and verbal communication skills.
• Experience with patent prosecution and clearance searches.
• Familiarity with IP management platforms (e.g., CPI, Anaqua, or similar).
• Ability to maintain confidentiality and handle sensitive information.

Compensation: $80,000.00-$100,000.00, plus overtime and bonus. The salary offered to a successful candidate will be dependent on several factors that may include but are not limited to years of experience within the job, years of experience within the required industry, education, etc. 

This is a hybrid role with the expectation of 3 days in the office. 

The description above is intended to reflect general duties and responsibilities and is not to be interpreted as all encompassing. Nothing in this job description restricts the firm’s right to assign or reassign duties and responsibilities to this job at any time. 

The firm is an Equal Opportunity Employer. It is our policy to recruit, hire, train, and promote employees without regard to race, color, disability, religion, age, marital status, veteran status, gender, national origin, sexual orientation, genetic information, medical condition or disability, or any other protected status under federal, state, or local law. 

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