Great opportunity for an experienced Trademark Paralegal to join a sophisticated boutique law firm on a direct hire remote basis to add to the firm’s growing practice. The role of the Trademark Paralegal is to assist attorneys in the firm’s IP practice working in all facets of trademark, design patent, copyright, enforcement and other brand protection areas. This includes counseling, clearance, licensing, prosecution, business transactions involving intellectual property, maintenance, enforcement and litigation. This position is an integral part of the IP team who represents clients in a broad range of industries including fashion, cosmetics, motor vehicle, manufacturing, technology, health care, food and beverage, real estate, and financial services. Duties include, but are not limited to the following:
- Analyze portfolios to identify potential new application filing recommendations and other issues
- Structure and conduct preliminary U.S. and international trademark searches
- Analyze and report preliminary trademark search results
- Coordinate U.S. and international full trademark search projects
- Compile summaries of trademark search opinions
- Coordinate U.S. and international trademark filing projects
- Prepare and submit responses to U.S. Office Actions for trademarks and design patents
- Work with foreign counsel on all aspects of searching, filing, prosecution, maintenance, disputes, and ownership of intellectual property rights
- Draft correspondence to clients including summaries of issues, recommendations, and risk assessments
- Prepare and record worldwide assignments and other post-transaction closing documents impacting intellectual property rights
- Assist with U.S. and international oppositions and cancellations
Qualifications:
- 8-10 years’ experience in the trademark and brand protection areas of intellectual property
- Highly organized with strong research and analytical skills
- Superior attention to detail
- Must be able to delegate work and supervise such work to support team members
- Must be proficient with relevant IP websites and databases including USPTO and WIPO, preferable Corsearch for searching and trademark watching
- Experience with vendors such as Clarivate/CompuMark, Corsearch, etc.
- Significant domestic and international experience including overall trademark and design portfolio management, clearance, due diligence, registration, maintenance and enforcement
- Ability to independently oversee all aspects of U.S. and foreign trademark and design patent prosecution, maintenance and disputes
- Ability to manage large, complex, international trademark and design patent portfolios
- Ability to analyze new and existing portfolios to identify gap filing recommendations, ownership and other issues
- Ability to complete electronic filings in the USPTO, including TTAP, and WIPO and to delegate preparation of such filings as appropriate
- Ability to delegate work and supervise such work to support team members
- Experience coordinating international full search trademark and patent design patent application filing projects including analyzing each project, providing recommendations, corresponding with clients and foreign counsel, and analyzing and summarizing foreign associate opinions and recommendations
- Experience with trademark docketing software, preferably CPI, including docket entry, searching, and preparing reports
- Working knowledge of domain name registration and management
- Experience analyzing chain of title and updating IP ownership in the U.S. and internationally
- Experience analyzing trademark watch notices and managing watch services
- Must be able to analyze complex trademark portfolio matters
- Must be able to synthesize foreign associate opinions and recommendations into client correspondence
- Familiarity with TTAB rules and procedures
- Design patent experience a plus, particularly experience with both direct-filed and Hague-filed design patent applications; experience with ancillary forms, restrictions, divisionals, continuations, continuations-in-part, novelty/obviousness refusals, international practice, petitions, and Examiner contact; familiarity with prior art searching, ownership searching, and the like; understanding of drawing requirements, foreign filing licenses, information disclosure statements, application requirements, inventor requirements, and ownership considerations; knowledge of design patent vendors, contacts/resources, emerging trends, etc.; comfortable with discussing strategy and related considerations with attorneys and offering suggestions for design patent filings
- Copyright Experience a plus
- Experience with Social Media a plus
If you would like to learn more about the Trademark Paralegal position available on a remote basis, then please submit your resume, in Word format, by clicking the Apply Now button.
Trustpoint.one provides equal employment opportunities to all employees and applicants for employment and prohibits discrimination and harassment of any type without regard to race, color, religion, age, sex, national origin, disability status, genetics, protected veteran status, sexual orientation, gender identity or expression, or any other characteristic protected by federal, state or local laws.
Job Type: Full-time
Pay: From $100,000.00 per year
Benefits:
- 401(k)
- Dental insurance
- Health insurance
- Paid time off
- Vision insurance
Schedule:
- Monday to Friday
- No nights
- No weekends
Work Location: Remote