What are the responsibilities and job description for the Trademark Paralegal position at Integr8staff?
Job Title – Trademark Paralegal
Location – Los Angeles, CA
Full Time, Hybrid 3 days onsite
Salary Range; 175-185k, DOE
Non-Exempt, Overtime Eligible
Job Summary of the Trademark Paralegal position
Integr8staff is seeking a proven Trademark Paralegal to support the trademark attorneys on all trademark prosecution matters. Including conducting research, preparing and filing legal documents, communicating with clients and government agencies, and maintaining accurate records. The role requires extensive knowledge of U.S. and Foreign trademark prosecution rules and procedures.
Responsibilities of the Trademark Paralegal position
Conduct and analyze preliminary trademark clearance searches and prepare summary of findings.
Work with outside vendors to order comprehensive full search reports, set-up trademark watching services, and other monitoring services.
Research, prepare cost estimates for filing domestic and foreign trademark applications and renewals.
Prepare and file U.S. trademark applications, responses to office actions, requests for extensions of time, statements of use, declarations of use, declarations of incontestability, renewals, and other filings related to U.S. trademark prosecution.
Prepare and file Madrid Protocol international applications, responses to irregularity notices, subsequent designations, and WIPO renewals.
Prepare and file state trademark applications and renewals.
Correspond with foreign associates to file national trademark applications, provisional refusal responses, renewals, oppositions/cancellations, and other matters related to foreign trademark prosecution.
Record ownership transfer, security agreements and releases with the US Patent and Trademark Office.
Review and report trademark watch notices.
Assist with preparing and filing TTAB proceedings, other trademark opposition, infringement, & enforcement matters.
Order certified copies of various trademark and corporate documents and oversee the legalization process of documents.
Draft trademark assignments, security agreements, and releases of security agreements, and record ownership transfers, liens, and releases and other updates with the USPTO and WIPO, and coordinate recordation of ownership transfers and updates with foreign associates
Review and monitor work with docketing team to track all U.S. and foreign trademark deadlines.
Manage and oversee U.S. and international trademark portfolios and prepare status reports.
Assist with other trademark matters, such as cost estimates, budgets, UDRP actions, domain name registrations, customs recordation, IP due diligence, etc.
Draft, file copyright applications, record ownership transfer, security agreements, and releases with the US Copyright Office.
Conduct IP due diligence related to copyrights.
Requirements of the Trademark Paralegal position
A minimum of 4-7 years of trademark prosecution experience in a law firm.
An ABA-approved paralegal certification is required.
Knowledge of U.S., WIPO, and foreign trademark rules and procedures. Ability to handle multiple projects with changing priorities while working independently in a fast-paced environment.
Strong working knowledge of filing with the USPTO and preparing and/or filing with WIPO.
Proficiency in Windows 11, Microsoft Outlook, Excel, PowerPoint, Adobe Acrobat, Zoom, and Teams, and experience working with document management systems.
Enforcement specialist experience needed.
Ability to handle large trademark portfolios and related deadlines.
Ability to work overtime, evenings, and weekends, as needed.
Possess excellent spelling, grammar, and punctuation skills.
Strong attention to detail, prioritize tasks, and excellent time management skills to meet deadlines.
Updated resume is required for consideration. Only Local candidates will be considered - Position does not offer relocation or visa sponsorship.
#IP #intellectualproperty #Trademark #trademarkclearance #TTAB #prosecution
#USPTO #WIPO #foreigntrademark #MadridProtocol
Location – Los Angeles, CA
Full Time, Hybrid 3 days onsite
Salary Range; 175-185k, DOE
Non-Exempt, Overtime Eligible
Job Summary of the Trademark Paralegal position
Integr8staff is seeking a proven Trademark Paralegal to support the trademark attorneys on all trademark prosecution matters. Including conducting research, preparing and filing legal documents, communicating with clients and government agencies, and maintaining accurate records. The role requires extensive knowledge of U.S. and Foreign trademark prosecution rules and procedures.
Responsibilities of the Trademark Paralegal position
Conduct and analyze preliminary trademark clearance searches and prepare summary of findings.
Work with outside vendors to order comprehensive full search reports, set-up trademark watching services, and other monitoring services.
Research, prepare cost estimates for filing domestic and foreign trademark applications and renewals.
Prepare and file U.S. trademark applications, responses to office actions, requests for extensions of time, statements of use, declarations of use, declarations of incontestability, renewals, and other filings related to U.S. trademark prosecution.
Prepare and file Madrid Protocol international applications, responses to irregularity notices, subsequent designations, and WIPO renewals.
Prepare and file state trademark applications and renewals.
Correspond with foreign associates to file national trademark applications, provisional refusal responses, renewals, oppositions/cancellations, and other matters related to foreign trademark prosecution.
Record ownership transfer, security agreements and releases with the US Patent and Trademark Office.
Review and report trademark watch notices.
Assist with preparing and filing TTAB proceedings, other trademark opposition, infringement, & enforcement matters.
Order certified copies of various trademark and corporate documents and oversee the legalization process of documents.
Draft trademark assignments, security agreements, and releases of security agreements, and record ownership transfers, liens, and releases and other updates with the USPTO and WIPO, and coordinate recordation of ownership transfers and updates with foreign associates
Review and monitor work with docketing team to track all U.S. and foreign trademark deadlines.
Manage and oversee U.S. and international trademark portfolios and prepare status reports.
Assist with other trademark matters, such as cost estimates, budgets, UDRP actions, domain name registrations, customs recordation, IP due diligence, etc.
Draft, file copyright applications, record ownership transfer, security agreements, and releases with the US Copyright Office.
Conduct IP due diligence related to copyrights.
Requirements of the Trademark Paralegal position
A minimum of 4-7 years of trademark prosecution experience in a law firm.
An ABA-approved paralegal certification is required.
Knowledge of U.S., WIPO, and foreign trademark rules and procedures. Ability to handle multiple projects with changing priorities while working independently in a fast-paced environment.
Strong working knowledge of filing with the USPTO and preparing and/or filing with WIPO.
Proficiency in Windows 11, Microsoft Outlook, Excel, PowerPoint, Adobe Acrobat, Zoom, and Teams, and experience working with document management systems.
Enforcement specialist experience needed.
Ability to handle large trademark portfolios and related deadlines.
Ability to work overtime, evenings, and weekends, as needed.
Possess excellent spelling, grammar, and punctuation skills.
Strong attention to detail, prioritize tasks, and excellent time management skills to meet deadlines.
Updated resume is required for consideration. Only Local candidates will be considered - Position does not offer relocation or visa sponsorship.
#IP #intellectualproperty #Trademark #trademarkclearance #TTAB #prosecution
#USPTO #WIPO #foreigntrademark #MadridProtocol