Trademark Prosecution Specialist

5 days ago

Los Angeles, California, United States Kilpatrick Townsend & Stockton Full time
Job Title: Trademark Prosecution Paralegal

Kilpatrick Townsend & Stockton LLP is seeking a highly skilled Trademark Prosecution Paralegal to join our Intellectual Property Department in San Francisco, Walnut Creek, San Diego, or Los Angeles. This is a full-time, regular position with a competitive salary range of $51.38 to $77.13 per hour in California.

Job Summary:

We are looking for a detail-oriented and organized individual with a strong background in trademark law and procedure. The successful candidate will be responsible for managing large global trademark portfolios, conducting electronic recordation of assignment documents, and preparing and filing U.S. trademark applications. The ideal candidate will have a strong understanding of U.S. trademark rules and procedure, as well as working knowledge of national laws of other countries.

Key Responsibilities:
  • Review and understand docket deadlines, and take action as needed on each file.
  • Conduct electronic recordation of assignment documents and report same to clients.
  • Manage large global trademark portfolios and comprehend chain of title in U.S. trademarks.
  • Assist with trademark clearance projects, including U.S. screening and full searches, and international screening and formal counsel searches.
  • Prepare and file U.S. trademark applications, including electronic filings with follow-through to registration and post-registration maintenance and renewals.
  • Coordinate with foreign counsel on international clearance, filing, maintenance, and renewal matters.
  • Effect portfolio transfers and manage multi-client portfolios.
  • Prepare and file powers of attorney and letters of instruction.
  • Assist in trademark filing strategy discussions and due diligence.
  • Assist with preparation and filing of responses to Office Actions.
Requirements:
  • Bachelor's degree or equivalent experience required.
  • Minimum 5 years of trademark work experience in a professional environment, including progressive responsibility in managing trademark and litigation matters.
  • Extensive knowledge of U.S. trademark rules and procedure, working knowledge of national laws of other countries, and knowledge of Paris Convention and deadlines set therein.
  • Knowledge of filing requirements for convention (foreign) applications.
  • Proficient with electronic research tools such as Dialog, Saegis, PTO, and WIPO.
  • High level of proficiency with technology, including Microsoft Office Suite applications, Adobe Acrobat, Lexis/Nexis, Westlaw, and other internet research tools.
  • Excellent organizational skills, attention to detail, and ability to multi-task.
  • Highly effective written and oral communication skills.
  • Creative problem-solving abilities.
  • Ability to work independently and take initiative to move projects to conclusion.
  • Maintain professional demeanor in stressful situations.
  • Reliable and dependable team player.
  • Maintain confidentiality of client information.
  • Ability to perform well under pressure.
What We Offer:

Kilpatrick Townsend & Stockton LLP offers a comprehensive benefits package, including medical, dental, and vision insurance, life insurance, short-term disability plans, and retirement plans. We also offer holidays and paid time off.

Kilpatrick is an Equal Opportunity Employer and is committed to equal employment opportunity for all persons, regardless of race, color, religion, sex or gender, national origin, age, veteran status, disability, sexual orientation, gender identity, or any other basis prohibited by applicable law.

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