Role Description
Join our Global Trademark and Brand Management Team as a Trademark Paralegal located in our Denver, Washington D.C. or Orange County, CA office. The Trademark Paralegal will assist multiple attorneys in the firm’s Global Trademark and Brand Management Practice.
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Manages a full docket of trademark-related deadlines, sends timely reminders to clients and attorneys, and ensures that deadlines are handled.
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Conducts in-house trademark screening searches on the TESS, SAEGIS, Corsearch, and WIPO Global Brand Database.
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Prepares and files U.S. trademark applications, renewal applications, non-substantive office action responses, use declarations, extensions of time, and other USPTO filings.
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Prepares and files international applications and extensions of international registrations with the World Intellectual Property Office (WIPO).
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Files Uniform Domain Name Dispute Resolution Policy (UDRP) complaints with the Forum and WIPO.
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Records documents such as assignments, name changes, and lien releases with the USPTO’s Assignment Recordation Branch.
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Files documents with the Trademark Trial and Appeal Board and prepares non-substantive procedural filings for filing with the Trademark Trial and Appeal Board.
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Communicates professionally and accurately with clients to collect information and instructions related to trademark searches and filings.
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Instructs and supervises trademark prosecution and trademark enforcement matters handled by foreign law firms and coordinates the preparation, execution, notarization, legalization, and apostille of documents filed with international trademark offices.
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Investigates infringing uses of trademarks.
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Intakes client requests for searches and filings and coordinates attorney handling of matters.
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Creates customized trademark records reports for clients.
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Supports client development activities.
Qualifications
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Must have a broad understanding of the USPTO’s Trademark Electronic Application System and how to prepare and file various types of trademark prosecution and maintenance documents via TEAS.
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Experience with the USPTO’s Electronic System for Trademark Trials and Appeals and know how to file various types of trademark appeal and opposition/cancellation documents via ESTTA.
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Demonstrate effective organizational, time management, project management, communication, and timekeeping skills.
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Experience creating technically proficient written communications without typographical errors.
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Demonstrate proficiency with various technologies common in trademark and brand management.
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Excellent customer service skills.
Requirements
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Bachelor’s Degree required, Certificate in Paralegal studies from an accredited institution preferred; equivalent experience considered.
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Certified Paralegal a plus.
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Minimum of 7 years’ experience as a trademark paralegal at a law firm or five years’ experience as a trademark professional.
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Proficiency with Windows-based software and Microsoft Word, Excel, and Outlook, and other informational databases required.
Benefits
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Expected pay range: $40.86 to $49.03 per hour.
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Actual pay will be adjusted based on experience, location, and other job-related factors permitted by law.
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Full-time employees may be eligible for a discretionary bonus, health insurance with an optional HSA, short-term disability, long-term disability, dental insurance, vision care, life insurance, Healthcare and Dependent Care Flexible Spending Accounts, 401K, vacation, sick time, and an employee assistance program.
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Additional voluntary programs include: voluntary accident insurance, voluntary life, voluntary disability, voluntary critical illness and cancer insurance, and pet insurance.
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Commuter and Transit programs may also be available in certain markets.