What are the responsibilities and job description for the Trademark Paralegal position at Bodman PLC?
Department: Paralegal
Location: Ann Arbor, MI
Bodman PLC is seeking a Trademark Paralegal to join our Intellectual Property Practice Group. In this position you will work closely with members of Bodman’s Intellectual Property Team to provide high-quality service to our clients. We’re looking for a professional with strong critical thinking and project management skills, a strategic mindset, and meticulous attention to detail.
Primary Responsibilities
- Conduct trademark and IP-related searches using U.S. and foreign IP office databases (patent, trademark, copyright) to identify ownership, lienholders, and record relevant documents.
- Prepare and file U.S. trademark prosecution documents with the USPTO, including, applications, responses to office actions, statements of use, extension requests, requests to divide, and post-refusal submissions.
- Prepare and file trademark documents with WIPO, including applications for International Registration, responses to Notices of Irregularity, renewals, assignments, and powers of attorney.
- Coordinate with foreign counsel on the prosecution and maintenance of trademark applications/registrations outside of the United States, including attending to notarization and legalization of documents.
- Prepare and record ownership and change of name documents related to trademarks.
- Assist with trademark enforcement matters, including working with and corresponding foreign counsel regarding potential oppositions, cancellations, and cease & desist letters.
- Conduct online research relating to trademark, copyright, and advertising matters; domain name disputes; and unfair competition.
- Support with trademark disputes, including oppositions and infringement claims.
- Assist with the management of trademark portfolios, including tracking deadlines and renewals.
- Maintain professional and confidential client communications.
- Bachelor’s degree, preferably in Social Sciences, Pre-Law, English, or a related field.
- Minimum of 3 years of direct experience filing with the Trademark division of the USPTO.
- Working knowledge of intellectual property and corporate law, including security interests in IP.
- Experience with filing and searching for information in the USPTO and the U.S. Copyright Office.
- Strong writing and communication skills, with the ability to draft clear, concise correspondence.
- Experience conducting online searches using major search engines and global trademark databases.
- Excellent organizational skills with superb attention to detail.
- Proficiency in Microsoft Word, Excel, and Access (including data entry and report generation).
- Ability to work collaboratively and a commitment to continuous professional development.