Trademark Paralegal

1 week ago

San Francisco, CA, United States Womble Bond Dickinson LLP Full time

Womble Bond Dickinson (US) LLP is seeking a Trademark Paralegal to join their Intellectual Property team. This position would be responsible for assisting with trademark due diligence, filing documents with the USPTO, and monitoring deadlines. The ideal candidate for this role would have at least five years of related experience in a law firm, or law department within a corporation. This position is eligible in any of our Phoenix, Las Vegas or any of our California offices.

RESPONSIBILITIES:

  • Prepare documents for attorney review and filing with USPTO including Applications, Office Action Responses, Declarations of Use and Incontestability, Applications for Renewal, and Extensions of Time to Oppose
  • Draft appropriate identifications of goods and services and identify appropriate specimens
  • Order, conduct and review trademark searches and prepare preliminary summaries
  • Monitor watch notices
  • Manage execution and legalization of documents * Review investigative summaries and prepare reports and recommendations
  • Correspond with foreign associates regarding searches, filing and prosecuting applications, oppositions, registration maintenance and transfers
  • Communicate with clients regarding trademark maintenance requirements
  • Assist with trademark due diligence, prepare, and record assignments and undertake other chain of title activities related to corporate transactions
  • Monitor deadlines and coordinate with docketing team (docketing not required)
  • Coordinate trademark opposition, cancellation, and other trademark disputes
  • Process invoices from foreign associates and other vendors
REQUIREMENTS:
  • Bachelor’s degree/Paralegal Certificate preferred with five years related experience in law firm or law department including all aspects of USPTO trademark work (prosecution, maintenance, and renewals) as well as TTAB proceedings (oppositions and cancellations)
  • Must be proactive, dedicated, positive and energetic
  • Excellent written and oral communications skills
  • Experience handling large portfolios
  • Strong computer skills
  • Resourceful and creative self-starter
  • Balance competing active deadlines in a fast-paced environment
  • Superior organization skills
  • Ability to work independently and as part of a team
  • Strong interpersonal skills
  • Fluent in SAEGIS, TO TEAS System, Microsoft 365, including Outlook, Word, Excel, and Teams
  • Domain name experience a plus
  • Advertising review experience a plus


The national average salary range for this role is $58,000 - $110,000. Starting salary will be determined based on location, qualifications, and experience.

This position is subject to export control laws.

Equal Opportunity Employer/Protected Veterans/Individuals with Disabilities

This employer is required to notify all applicants of their rights pursuant to federal employment laws.
For further information, please review the Know Your Rights notice from the Department of Labor.

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