INTELLECTUAL PROPERTY PARALEGAL

BUCHALTER LLP; Santa Monica (CA); On-site; USD 95,000 - 115,000; Full time

Benefits offered by this job

401K

Profit sharing

Full benefits package

Job summary

Buchalter LLP is seeking a highly motivated trademark paralegal for our Los Angeles office to support the IP practice group in prosecution, maintenance, and enforcement of trademarks. You will conduct trademark searches, prepare applications, monitor deadlines, and assist with domain disputes and related tasks.

The successful candidate will have at least 5 years of trademark paralegal experience, strong knowledge of trademark law and terminology, and excellent communication skills.

Qualifications

• Minimum of 5 years of experience as a trademark paralegal.
• Familiar with domestic and international trademark matters.
• Excellent written and verbal communication skills.

Responsibilities

• Conduct trademark searches using USPTO and third-party systems and provide legal analysis on availability.
• Prepare and file trademark applications, statements of use, and renewal documents with the USPTO.
• Monitor and track deadlines for prosecution and maintenance.
• Prepare responses to office actions and other correspondence from government agencies.

Skills

Trademark docketing

Legal research

Client communication

Microsoft Office

International matters

Education

ABA-approved paralegal certificate

Attorney declaration under BPC 6450

Tools

Trademark databases

MS Office

Job description

We are seeking a highly motivated and experienced trademark paralegal to join our team in our Los Angeles office. The successful candidate will assist attorneys in the intellectual property practice group with a variety of tasks related to trademark prosecution, maintenance, and enforcement.Key Responsibilities:Conduct trademark searches using the USPTO system and third party systems (e.g. Corsearch, Saegis, etc.) and provide legal analysis on availability of trademarksPrepare and file trademark applications, statements of use, and renewal documents with the USPTOMonitor and track deadlines for trademark prosecution and maintenanceManage international trademark associates and deadlines and invoicing theretoLocate, evaluate and file Specimens of Use and accompanying URL information with the Trademark Office for: Amendments to Allege Use, Statements of Use, Section 8 and 15 Declarations of Continuous Use and Incontestability and Section 8 and 9 Declarations of Continuous Use and RenewalCommunicate with clients, foreign associates, and government officialsPrepare and respond to office actions and other correspondence from government agenciesMaintain and update trademark databasesProvide support to attorneys in all aspects of the trademark practiceAssist in preparing and filing domain name disputes such as UDRP, URS, and other domain name disputesAssisting and filing disputes, namely cancellations and oppositions, within the Trademark Trial and Appeal BoardQualifications:ABA-approved paralegal certificate or attorney declaration under the BPC 6450Minimum of 5 years of experience as a trademark paralegalFamiliar with domestic and international trademark mattersStrong knowledge of trademark laws and terminologyExcellent written and verbal communication skillsShould be comfortable contacting clients directly as neededStrong attention to detail and organizational skillsProficient in Microsoft Office and document management systemsAbility to work independently and handle multiple tasks simultaneouslyIP litigation experience is a plusPatent experience is a plusExperience with trademark docketing and database management is a plusBuchalter LLP offers a competitive salary, 401K, profit sharing and a full benefits package.Pay Scale: The reasonably expected pay scale for this position is $95-115k. This is an employer estimate and the salary offered within that range, and the potential for bonus and bonus amount, will depend on candidate’s years of practice, experience and performance.Buchalter was founded based on principles of inclusivity. Our firm’s commitment to reflecting and enhancing the rich diversity of the clients and communities we serve is more than eight decades strong. Buchalter’s diversity of attorneys and staff provides clients with a greater breadth of creative talent and alternative approaches, and enriches our firm’s collaborative, entrepreneurial and collegial environment, benefiting all. We are proud to be an equal opportunity employer. In recruiting, we welcome the unique contributions that all candidates can bring in terms of their education, opinions, culture, ethnicity, race, sex, gender identity and expression, nation of origin, age, languages spoken, veteran’s status, color, religion, disability, sexual orientation and beliefs.