Trademark Paralegal

Job DescriptionJob Description

Trademark Paralegal – National Law Firm

A highly regarded, full-service law firm with a strong national presence and international reach is seeking an experienced Trademark Paralegal to join their team. The firm has offices in major U.S. cities, including those on the East Coast and Midwest. With over 300 attorneys practicing across more than 50 legal areas, this firm is renowned for providing top-tier legal services to clients across a wide range of industries.

The ideal candidate will bring solid experience in both U.S. and foreign trademark prosecution and portfolio management. This role involves a diverse range of responsibilities including managing trademark portfolios, conducting trademark searches, assisting with U.S. and foreign trademark prosecution, and supporting contentious trademark matters. You’ll be working directly with both clients and foreign counsel, ensuring clear communication and efficient handling of trademark-related tasks.

Responsibilities:

• Prepare and file U.S. trademark prosecution and maintenance documents with the appropriate authorities, including applications, office action responses, renewals, and assignments.
• Conduct preliminary and comprehensive trademark searches using third-party search platforms and common law databases.
• Handle routine communication with clients regarding trademark prosecution and maintenance.
• Assist with U.S. and international trademark filings and responses, including with organizations like the USPTO and WIPO.
• Work closely with foreign counsel for international trademark registrations, ensuring the completion of notarization and legalization of necessary documents.
• Prepare ownership and name change documents related to trademarks.
• Assist with trademark enforcement actions, including opposition, cancellation proceedings, and cease & desist letters.
• Record billable hours and ensure all deadlines are managed effectively.
• Stay up to date on departmental processes, actively taking initiative to follow up and meet all necessary actions.

Qualifications:

• Extensive experience in trademark prosecution and management, both U.S. and internationally.
• Bachelor’s degree or legal assistant certification (relevant work experience may be considered in lieu of formal education).
• Proficient in trademark research and clearance databases and experience using relevant legal software.
• Strong communication skills to effectively manage relationships with both internal team members and external clients and counsel.
• Ability to manage multiple tasks independently and excel in a fast-paced legal environment.
• Must be detail-oriented, highly organized, and proactive in problem-solving.

Additional Details:
This position can be based in several major U.S. locations, including offices in the East Coast and Midwest regions, with opportunities for remote flexibility depending on the candidate’s experience and preference. The role offers a competitive compensation package and the chance to work in a collaborative, supportive environment.

If you are an experienced Trademark Paralegal seeking to contribute to a dynamic legal team within a prestigious law firm, please reach out to us for more information about this opportunity.

Please add me on LinkedIn -- https://www.linkedin.com/in/peter-d%E2%80%99achille-790926192/

Company DescriptionEstablished in 2003, Liberty Personnel quickly grew into one of the largest technical recruiting agencies on the East Coast. Today, Liberty Personnel has a national presence and a diverse client base. Listed below are a number of the industries and openings we work on:

Information Technology, Software Programmers, Engineering, Manufacturing, Plant Maintenance, Construction, Oil and Gas, Medical Communications, Accounting, Finance, Electronics, Scientific, Medical Device, Sales, Pharmaceutical, Admin, Automation, Controls, Civil, HVAC, Wastewater, Structural, Electrical, Chemists, Validations, Logistics, Food Production, Renewable Energy and MachinistsCompany DescriptionEstablished in 2003, Liberty Personnel quickly grew into one of the largest technical recruiting agencies on the East Coast. Today, Liberty Personnel has a national presence and a diverse client base. Listed below are a number of the industries and openings we work on:\r
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Information Technology, Software Programmers, Engineering, Manufacturing, Plant Maintenance, Construction, Oil and Gas, Medical Communications, Accounting, Finance, Electronics, Scientific, Medical Device, Sales, Pharmaceutical, Admin, Automation, Controls, Civil, HVAC, Wastewater, Structural, Electrical, Chemists, Validations, Logistics, Food Production, Renewable Energy and Machinists

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