The Trademark Paralegal will manage domestic and foreign trademark filings, conduct clearance searches, correspond with clients, and assist in litigation support.
Description
Our client is seeking an IP/IT paralegal for their New York office. Three years of experience required. Candidates must have experience in both domestic trademark prosecution and oppositions, as well as involvement in managing similar foreign filings through foreign counsel. Candidates must also have the ability to perform trademark clearance searches and to organize and coordinate mail, correspondence (internally and externally) and manage an active calendar. PowerPoint and Excel skills important.
ESSENTIAL DUTIES AND RESPONSIBILITIES
- Conduct clearance searches using online databases, and review and analyze cited references for potential conflicts.
- Prepare and file trademark applications, amendments, statements of use, assignments, renewal applications, and other trademark-related documents with the United States Patent & Trademark Office (USPTO) and foreign trademark offices.
- Manage and update the trademark docket, including ensuring that all trademark-related deadlines are accurately recorded and monitored.
- Correspond with clients to report the status of active matters and to respond to client inquiries.
- Provide support in litigation and enforcement matters, including preparing exhibits and discovery materials, and conducting research as needed.
- Additional tasks as necessary in support of the department.
Requirements
QUALIFICATIONS
- Strong computer skills; Computer Packages Inc. (CPI), SAEGIS, MS Office (Word, Excel, Outlook) experience required; database experience a plus.
- Highly motivated, pleasant individual with professional demeanor and appearance.
- Must be able to exercise independence and good judgment, think creatively to solve problems, and demonstrate excellent attention to detail.
- Excellent written and oral communication skills.
- Must maintain a high quality work product, have the ability to schedule work to meet department deadlines and be able to perform job responsibilities under pressure efficiently, productively and in a professional manner.
Similar Jobs
Legal Tech • Professional Services
Support trademark prosecution and maintenance for tech and life-sciences clients: conduct clearance searches, prepare and file USPTO and foreign trademark and copyright applications, manage docketing and watch services, coordinate with clients and foreign counsel, assist with enforcement proceedings and TTAB/UDRP matters, and maintain records in WebTMS.
Top Skills:
Ai ToolsSaegisTrademarknowUsptoWebtms
Marketing Tech • Design
The Trademark Paralegal supports attorneys by managing trademark portfolios, handling applications, tracking deadlines, and organizing documentation for trademark enforcement and opposition matters.
Top Skills:
Webtms
Marketing Tech • Design
The Senior Trademark Paralegal assists attorneys with trademark prosecution, maintenance, and enforcement, managing trademarks and mentoring junior staff.
Top Skills:
Webtms
What you need to know about the NYC Tech Scene
As the undisputed financial capital of the world, New York City is an epicenter of startup funding activity. The city has a thriving fintech scene and is a major player in verticals ranging from AI to biotech, cybersecurity and digital media. It also has universities like NYU, Columbia and Cornell Tech attracting students and researchers from across the globe, providing the ecosystem with a constant influx of world-class talent. And its East Coast location and three international airports make it a perfect spot for European companies establishing a foothold in the United States.
Key Facts About NYC Tech
- Number of Tech Workers: 549,200; 6% of overall workforce (2024 CompTIA survey)
- Major Tech Employers: Capgemini, Bloomberg, IBM, Spotify
- Key Industries: Artificial intelligence, Fintech
- Funding Landscape: $25.5 billion in venture capital funding in 2024 (Pitchbook)
- Notable Investors: Greycroft, Thrive Capital, Union Square Ventures, FirstMark Capital, Tiger Global Management, Tribeca Venture Partners, Insight Partners, Two Sigma Ventures
- Research Centers and Universities: Columbia University, New York University, Fordham University, CUNY, AI Now Institute, Flatiron Institute, C.N. Yang Institute for Theoretical Physics, NASA Space Radiation Laboratory
