Senior Trademark Paralegal

Capstone Search Partners; United States; Hybrid; USD 60,000 - 85,000; Full time

Benefits offered by this job

Bonus

Benefits

Job summary

Capstone Search Partners is seeking a Trademark Paralegal to manage trademark portfolios and handle prosecution tasks in a hybrid, full-time role in the United States.

You will prepare filings with the USPTO, coordinate with foreign counsel, and conduct clearance searches while maintaining client communications and accurate docketing.

Qualifications

• Proven experience in U.S. and foreign trademark prosecution, maintenance, and renewal.
• Bachelor's Degree, Paralegal Certificate, OR significant experience in lieu of a degree.
• Strong knowledge of trademark clearance databases and research tools like PATTSY, Saegis, LexisNexis, and Westlaw.

Responsibilities

• Trademark Prosecution & Maintenance: Prepare and file USPTO documents (applications, responses, extensions, statements of use, renewals, assignments, powers of attorney).
• Global Coordination: Work with foreign counsel on applications and registrations; ensure compliance with international rules.
• Client Communication: Maintain regular updates with clients and foreign counsel on clearance, filings, and office actions.
• Trademark Clearance & Searches: Conduct preliminary and comprehensive searches using third-party platforms and common law databases.
• Infringement & Enforcement: Assist with oppositions, cancellations, cease & desist letters as needed.
• Litigation Support: Gather and organize evidence for in-house attorneys and external counsel.
• Database Management: Enter/update data in PATTSY; generate reports as needed.
• Cost Estimates: Prepare cost estimates for new filings.
• Customs Registrations: Prepare filings with U.S. Customs and Border Protection.
• Ownership Documentation: Prepare ownership/change of name documents for trademarks.
• Due Diligence: Perform due diligence on trademark portfolios.
• Monitoring & Deadlines: Track attorney dockets, deadlines, and billable hours.

Skills

Trademark prosecution

Global coordination

Client communication

Deadline management

Education

Bachelor's degree

Paralegal certificate

Tools

PATTSY

Saegis

LexisNexis

Westlaw

Job description

Job Description

Premier law firm: [to be disclosed]

Job title: Trademark Paralegal

Practice group: Intellectual Property

Division focus: Trademark Prosecution

Additional: Strong Bonuses + Benefits

Job type: Full-Time, Non-Exempt + Hybrid

The Opportunity

Are you passionate about intellectual property? Join our dynamic team and play a pivotal role in managing trademark portfolios, handling trademark clearance, and driving U.S. and foreign trademark prosecution.

Must-Haves

• Proven experience in U.S. and foreign trademark prosecution, maintenance, and renewal.
• Bachelor's Degree, Paralegal Certificate, OR significant experience in lieu of a degree.
• Strong knowledge of trademark clearance databases and research tools like PATTSY, Saegis, Lexis/Nexis, and Westlaw.

Job Description

• Trademark Prosecution & Maintenance: Prepare and file documents with the USPTO, including applications, office action responses, extensions, statements of use, affidavits, renewals, assignments, and powers of attorney.
• Global Coordination: Work closely with foreign counsel on trademark applications and registrations, ensuring compliance with international requirements.
• Client Communication: Maintain constant communication with clients and foreign counsel regarding clearance, filing instructions, office actions, and potential conflicts.
• Trademark Clearance & Searches: Conduct preliminary and comprehensive searches using third-party platforms and common law databases.
• Infringement & Enforcement: Assist with trademark enforcement, including potential oppositions, cancellations, and cease & desist letters.
• Litigation Support: Provide crucial litigation support, gathering and organizing evidence for in-house attorneys and external counsel.
• Database Management: Enter and update data in the trademark database (PATTSY), generating reports as needed.
• Cost Estimates: Prepare cost estimates for new filings.
• Customs Registrations: Prepare and file customs registrations and renewals with the U.S. Customs and Border Patrol.
• Ownership Documentation: Prepare and record ownership and change of name documents related to trademarks.
• Due Diligence: Conduct thorough due diligence on trademark portfolios.
• Monitoring & Deadlines: Assist with monitoring attorney dockets, managing deadlines, and recording billable hours accurately.