Trademark Paralegal

Plona Partners • Full-time • New York City Metropolitan Area, US • $80k - $130k / year • 4d ago

Location: NY, CHI, or DC

Position: Trademark Paralegal

Compensation: $80,000 - $135,000 DOE

Job Summary

The Trademark Paralegal is assigned to specific matters, clients, projects and/or specified routine activities and determines and prepares appropriate work product, sometimes with minimal attorney supervision. The Trademark Paralegal has a minimum billable requirement of 1550 hours per year.

Job Responsibilities

Conducts preliminary US searches and worldwide searches for trademark availability
Reviews and distributes, as needed, trademark watch notices for all clients to attorneys for further review and follow up
Conducts trademark use investigations and other due-diligence related activities
Assists in infringement, opposition, and related proceedings, including discovery-related activities, cite checking and filing
Prepares draft reporting letters and responses to Office Actions for attorney review
Reviews specimens and prepares draft declarations
Coordinates take-down notices with numerous social media platforms
Prepares formal assignments and agreements for trademark matters and records relevant materials with the United States Patent and Trademark Office
Prepares trademark status summary reports
Prepares worldwide cost estimates for filing and maintenance of trademarks

Knowledge, Skills and Abilities

General knowledge of domestic and international trademark prosecution law
Demonstrated ability to prepare a heavy volume of accurate and complete documents that meet US Trademark Office requirements
Demonstrated ability to identify and meet deadlines based on trademark office correspondence, client instructions, and other documents, and manage associated risks by coordinating with attorneys to file in advance of due dates whenever possible.
Demonstrated Intermediate PC knowledge, MS Word, PDF conversion tools, MS Outlook, and document management software