Job Description
Job title: Trademark Paralegal
Practice group: Intellectual Property
Compensation: $80,000-$110,000/per year
Additional: Strong Bonuses + Benefits
Job type:
Direct-Hire, Full-Time & Non-Exempt***Send resumes to: Hayley.christina@capstonesp.comThe Opportunity Are you passionate about intellectual property? Join our dynamic team and play a pivotal role in managing trademark portfolios, handling trademark clearance, and driving U.S. and foreign trademark prosecution.
Job Description:
Trademark Prosecution & Maintenance: Prepare and file documents with the USPTO, including applications, office action responses, extensions, statements of use, affidavits, renewals, assignments, and powers of attorney.
Global Coordination: Work closely with foreign counsel on trademark applications and registrations, ensuring compliance with international requirements.
Client Communication: Maintain constant communication with clients and foreign counsel regarding clearance, filing instructions, office actions, and potential conflicts.
Trademark Clearance & Searches: Conduct preliminary and comprehensive searches using third-party platforms and databases.
Infringement & Enforcement: Assist with trademark enforcement, including potential oppositions, cancellations, and c&d letters.
Database Management: Enter and update data in the trademark database (PATTSY), generating reports as needed.
Cost Estimates: Prepare cost estimates for new filings.
Customs Registrations: Prepare and file customs registrations and renewals with the U.S. Customs and Border Patrol.
Ownership Documentation: Prepare and record ownership and change of name documents related to trademarks.
Due Diligence: Conduct thorough due diligence on trademark portfolios.
Monitoring & Deadlines: Assist with monitoring attorney dockets, managing deadlines, and recording billable hours accurately.
Must-Haves:
Proven experience in U.S. and foreign trademark prosecution, maintenance, and renewal.
Bachelor’s Degree, Paralegal Certificate, OR significant experience in lieu of a degree.
Strong knowledge of trademark clearance databases and research tools like PATTSY, Saegis, Lexis/Nexis, and Westlaw.
