Trademark & IP Law Paralegal

Jobgether

Italia

Remote

EUR 17,000 - 22,000

Full time

4 days ago
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Benefits offered by this job

Fully remote work arrangement
Full-time or part-time options
Opportunity to work with U.S. lawyers

Job summary

Jobgether invites applications for a Trademark & IP Law Paralegal to be based remotely in Italy. As part of a U.S.

law firm, you will support trademark prosecution, portfolio management, and IP filings across multiple jurisdictions, coordinating deadlines and preparing documents for attorney review. You will handle docketing, client communications, and international coordination, ensuring accuracy and timely filings with USPTO.

Qualifications

  • At least 5 years of professional experience as a paralegal, lawyer, or attorney.
  • At least 2 years of experience working with a U.S. trademark or intellectual property law firm.
  • Strong hands-on experience with U.S. trademark prosecution and portfolio management.
  • Practical experience working with the USPTO and the Trademark Electronic Application System (TEAS).
  • Strong understanding of trademark filing requirements, prosecution procedures, and critical deadlines.
  • Experience maintaining trademark docketing systems and managing intellectual property portfolios.
  • Experience assisting with USPTO Office Action responses.
  • Familiarity with TTAB opposition and cancellation proceedings.
  • Experience conducting trademark searches and reviewing USPTO records.
  • Ability to work directly and effectively with U.S. attorneys and clients.
  • Strong legal drafting, document preparation, and research skills.
  • Experience using IP docketing software or legal case management systems.
  • Advanced proficiency with Microsoft Office 365 or comparable cloud-based business tools.
  • Excellent written and verbal English communication skills.
  • Exceptional attention to detail, organizational skills, and ability to manage multiple priorities.
  • A stable employment history, ideally with at least two years in each previous role.
  • Advanced practical experience using AI tools such as ChatGPT, Claude, and Gemini.

Responsibilities

  • Prepare and submit U.S. trademark applications, amendments, renewals, declarations of use, assignments, and other USPTO filings.
  • Prepare and file Statements of Use, Amendments to Allege Use, and post-registration maintenance documents under Sections 8, 9, and 15, along with other applicable submissions.
  • Assist attorneys with USPTO Office Action responses by gathering supporting evidence, organizing documentation, and preparing relevant materials.
  • Monitor application status, filing deadlines, Office Actions, renewals, and ongoing maintenance requirements.
  • Maintain accurate trademark docketing systems, calendar critical deadlines, and ensure compliance with applicable filing procedures.
  • Prepare trademark watch reports and monitor potentially conflicting marks to help protect clients' intellectual property rights.
  • Maintain organized digital case files, intellectual property portfolios, and supporting documentation within legal case management systems.
  • Conduct preliminary trademark searches, review USPTO records, and organize findings for attorney review.
  • Assist with trademark oppositions, cancellations, and proceedings before TTAB.
  • Support copyright registrations and other intellectual property filings.
  • Conduct legal and factual research relating to trademarks, copyrights, and broader intellectual property matters.
  • Communicate directly with clients to collect information, specimens, ownership details, and supporting documentation.
  • Prepare trademark assignment documents, consent agreements, coexistence agreements, and related legal correspondence.
  • Coordinate with foreign associates and international counsel on global trademark portfolio matters.
  • Use the firm's case management, docketing, and document management systems while following established procedures and quality standards.

Skills

Trademark prosecution
Portfolio management
Legal research
Client communication
English proficiency
AI tools experience
Attention to detail
Docketing software

Tools

USPTO TEAS
IP docketing software
Microsoft Office 365

Job description

This position is listed on behalf of a partner company, who manages all applications and next steps. Our partner is looking for a Trademark & IP Law Paralegal based remotely in Italy.

Join a U.S. law firm as a Trademark & IP Law Paralegal, providing essential legal and administrative support across trademark, copyright, and intellectual property matters. In this fully remote role, you will work closely with attorneys to manage trademark prosecution, maintain intellectual property portfolios, and ensure accurate, timely filings with the United States Patent and Trademark Office (USPTO). You will contribute to protecting clients' intellectual property rights by coordinating deadlines, preparing legal documents, conducting preliminary searches, and monitoring potentially conflicting trademarks. The position combines technical legal expertise with client communication, international coordination, and meticulous case management. You will thrive in a detail-oriented environment that values accuracy, reliability, and independent execution. This opportunity is suited to an experienced legal professional seeking a long-term remote position supporting U.S. legal operations.

Accountabilities
  • Trademark Prosecution and Filings: Prepare and submit U.S. trademark applications, amendments, renewals, declarations of use, assignments, and other USPTO filings.

  • Prepare and file Statements of Use, Amendments to Allege Use, and post-registration maintenance documents under Sections 8, 9, and 15, along with other applicable submissions.

  • Assist attorneys with USPTO Office Action responses by gathering supporting evidence, organizing documentation, and preparing relevant materials.

  • Trademark Portfolio Management: Monitor application status, filing deadlines, Office Actions, renewals, and ongoing maintenance requirements.

  • Maintain accurate trademark docketing systems, calendar critical deadlines, and ensure compliance with applicable filing procedures.

  • Prepare trademark watch reports and monitor potentially conflicting marks to help protect clients' intellectual property rights.

  • Maintain organized digital case files, intellectual property portfolios, and supporting documentation within legal case management systems.

  • Legal Research and Dispute Support: Conduct preliminary trademark searches, review USPTO records, and organize findings for attorney review.

  • Assist with trademark oppositions, cancellations, and proceedings before the Trademark Trial and Appeal Board (TTAB).

  • Support copyright registrations and other intellectual property filings.

  • Conduct legal and factual research relating to trademarks, copyrights, and broader intellectual property matters.

  • Client and International Coordination: Communicate directly with clients to collect information, specimens, ownership details, and supporting documentation.

  • Prepare trademark assignment documents, consent agreements, coexistence agreements, and related legal correspondence.

  • Coordinate with foreign associates and international counsel on global trademark portfolio matters.

  • Use the firm's case management, docketing, and document management systems while following established procedures and quality standards.

Requirements

The ideal candidate brings substantial paralegal or legal experience, strong knowledge of U.S. trademark procedures, and the ability to manage complex documentation and deadlines with precision. You should be comfortable working directly with U.S. attorneys and clients while maintaining consistent communication and productivity in a remote environment. Required qualifications include:

  • At least 5 years of professional experience as a paralegal, lawyer, or attorney.

  • At least 2 years of experience working with a U.S. trademark or intellectual property law firm.

  • Strong hands-on experience with U.S. trademark prosecution and portfolio management.

  • Demonstrated experience preparing and filing trademark applications, amendments, renewals, and post-registration maintenance documents.

  • Practical experience working with the USPTO and the Trademark Electronic Application System (TEAS).

  • Strong understanding of trademark filing requirements, prosecution procedures, and critical deadlines.

  • Experience maintaining trademark docketing systems and managing intellectual property portfolios.

  • Experience assisting with USPTO Office Action responses.

  • Familiarity with TTAB opposition and cancellation proceedings.

  • Experience conducting trademark searches and reviewing USPTO records.

  • Ability to work directly and effectively with U.S. attorneys and clients.

  • Strong legal drafting, document preparation, and research skills.

  • Experience using IP docketing software or legal case management systems.

  • Advanced proficiency with Microsoft Office 365 or comparable cloud-based business tools.

  • Excellent written and verbal English communication skills.

  • Exceptional attention to detail, organizational skills, and ability to manage multiple priorities.

  • A stable employment history, ideally with at least two years in each previous role.

  • Advanced practical experience using AI tools such as ChatGPT, Claude, and Gemini.

  • Reliable high-speed internet, professional equipment, and a quiet, dedicated home office.

  • Availability to work consistently during U.S. business hours.

  • Commitment to a long-term remote position supporting a U.S. law firm.

Benefits
  • Compensation of $14 per hour.

  • Fully remote work arrangement.

  • Full-time or part-time employment options.

  • Opportunity to work directly with U.S. attorneys on trademark prosecution and broader intellectual property matters.

  • Exposure to U.S. legal procedures, international trademark portfolios, and cross-border coordination.

  • Long-term remote work opportunity for an experienced legal professional.

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