What are the responsibilities and job description for the Trademark Paralegal position at Summit Staffing Partners?
Trademark Paralegal
Midtown Manhattan, NYC
On Site / In Office Role
Overview:
Our client, a top-tier private equity and luxury brand management firm based in Midtown Manhattan, is seeking a Trademark Paralegal to join its expanding in-house legal department, reporting and partnering directly to the firm's Chief Legal Officer. This is a full-time position with excellent benefits and phenomenal career growth opportunities as part of a phenomenal small team.
Responsibilities:
- Manage and docket trademark matters using CPI trademark database while assisting attorneys with U.S. trademark prosecution and maintenance.
- Coordinate international trademark matters through foreign counsel, including Powers of Attorney and Legalization procedures.
- Oversee opposition and cancellation proceedings, gather evidence, and prepare detailed reports on trademark statuses.
- Prepare and record name changes and assignments, conduct trademark searches, and review watch notices.
- Approve invoices, assist with due diligence for acquisitions, and review licensing agreements and contracts.
- Develop and implement best practices for trademark portfolio management and maintenance processes.
- Collaborate with internal business units and external counsel to ensure alignment on global trademark strategies and brand protection efforts.
- Analyze and advise on complex trademark clearance, prosecution, and enforcement matters.
- Train junior paralegals and other team members on trademark procedures and system updates.
- Monitor and ensure compliance with filing deadlines and renewal requirements in domestic and international jurisdictions.
- Prepare detailed trademark portfolio analyses and reports for senior leadership and stakeholders.
Requirements:
- Experience in a law firm or corporate legal department with extensive expertise in U.S. and international trademark prosecution procedures, PTO rules, forms, and CPI or similar trademark software.
- Exposure to global trademark portfolios, foreign counsel relationships, and opposition and cancellation proceedings.
- Strong organizational and project management skills, with the ability to prioritize and manage multiple tasks in a fast-paced environment.
- Proficiency in Microsoft Word and Excel, with familiarity with other trademark management and document review tools.
- Exceptional communication skills to effectively interact with internal stakeholders, external counsel, and international partners.
- Detail-oriented with the ability to analyze complex trademark issues and provide actionable insights.
- Must be or willing to become a notary in the state of NY.
Salary : $85,000 - $110,000