Senior Trademark Paralegal

Senior Trademark Paralegal

Location: New York, NY

The Organization: Large U.S. Based Multinational Law Firm

Salary & Benefits: Base salary up to 120K; Generous paid overtime and bonus; Medical, Dental and Vision Coverage; Transit Program; generous Paid Time Off; 401K w/match; Life Insurance; exceptional culture.

Summary: Seeking a Senior Trademark Prosecution Paralegal to support a busy New York practice. Candidate must be willing to work independently in a fast-paced, corporate environment. Well-paid overtime can be anticipated.

Key Responsibilities:

  • Run searches on IP holdings (registered trademarks, patents, registered copyrights, domain names) and IP-related litigation

  • Assist with filings and monitor proceedings in USPTO and Trademark Trial and Appeal Board matters

  • Assist attorneys in preparing cost estimates for preparing IP ownership searches and for recording IP assignments

  • Look over information memoranda and company website(s) for company background and IP information/usage

  • Analyze chain of title information for trademarks, patents and copyrights (global)

  • Assist attorneys in reviewing data room materials for documentation regarding registered trademarks, patents, copyrights and domain names

  • Order file wrappers, copies of recorded assignments and security interests, and title documents recorded at government offices

  • Compare company disclosure schedules against firm schedules and summarize discrepancies

  • Draft IP assignments and IP security documents including releases and agreements

  • Review IP assignments to verify proper execution including being notarized, stamped, witnessed, etc.

  • Prepare recordation cover sheets or electronic filings for documents to be recorded at USPTO or Copyright Office

  • Arrange for legalization of assignments for recording in foreign trademark and patent offices

  • Draft instruction letters to foreign associates regarding recording assignments in their countries

  • Correspond with foreign associates and communicate with seller’s and buyer’s IP counsel or in-house contact to obtain necessary documents and information for recording assignments

  • Monitor and maintain trademark prosecution docket for due dates, for responses, maintenance filings, renewals, oppositions and cancellations

  • Draft trademark/service mark applications, affidavits of use, maintenance and renewal filings, and assignment agreements

  • Draft responses to trademark examining attorney’s official action

  • Communicate with foreign trademark counsel and agents regarding registration and maintenance matters

Qualifications:

  • 8+ years Paralegal experience in Trademark Prosecution required

  • Bachelor’s Degree strongly preferred

Knowledge of USPTO and TTAB rules, and familiarity with international trademark filing procedures, drafting correspondence, and conducting due diligence reviews of intellectual property