Trademark Paralegal

Womble Bond Dickinson (US) LLP; Greensboro, Winston-Salem, High Point (NC, NC, NC); On-site; USD 55,000 - 75,000; Full time

Job summary

A prominent law firm is seeking a Trademark Paralegal to join their Intellectual Property team in North Carolina. This role involves preparing USPTO documentation, managing trademark due diligence, and communicating with clients. The ideal candidate should have at least five years of relevant experience in a law firm or corporate law department, strong organizational skills, and proficiency in Microsoft 365. This is an opportunity to work in a dynamic environment with a focus on trademark prosecution and disputes.

Qualifications

• Five years related experience in law firm or law department.
• Experience with USPTO trademark work.
• Ability to work independently and as part of a team.

Responsibilities

• Prepare documents for attorney review and filing with USPTO.
• Monitor deadlines and coordinate with docketing team.
• Assist with trademark due diligence and coordinate disputes.

Skills

Proactive attitude

Excellent written and oral communications

Strong computer skills

Ability to balance deadlines

Strong interpersonal skills

Education

Bachelor's degree/Paralegal Certificate

Tools

SAEGIS

TO TEAS System

Microsoft 365 (Outlook, Word, Excel, Teams)

Job description

Womble Bond Dickinson (US) LLP is seeking a Trademark Paralegal to join their Intellectual Property team. This position would be responsible for assisting with trademark due diligence, filing documents with the USPTO, and monitoring deadlines. The ideal candidate for this role would have at least five years of related experience in a law firm, or law department within a corporation. This position is eligible in any of our North Carolina offices.

Responsibilities

• Prepare documents for attorney review and filing with USPTO including Applications, Office Action Responses, Declarations of Use and Incontestability, Applications for Renewal, and Extensions of Time to Oppose
• Draft appropriate identifications of goods and services and identify appropriate specimens
• Order, conduct and review trademark searches and prepare preliminary summaries
• Monitor watch notices
• Manage execution and legalization of documents * Review investigative summaries and prepare reports and recommendations
• Correspond with foreign associates regarding searches, filing and prosecuting applications, oppositions, registration maintenance and transfers
• Communicate with clients regarding trademark maintenance requirements
• Assist with trademark due diligence, prepare, and record assignments and undertake other chain of title activities related to corporate transactions
• Monitor deadlines and coordinate with docketing team (docketing not required)
• Coordinate trademark opposition, cancellation, and other trademark disputes
• Process invoices from foreign associates and other vendors

Requirements

• Bachelor’s degree/Paralegal Certificate preferred with five years related experience in law firm or law department including all aspects of USPTO trademark work (prosecution, maintenance, and renewals) as well as TTAB proceedings (oppositions and cancellations)
• Must be proactive, dedicated, positive and energetic
• Excellent written and oral communications skills
• Experience handling large portfolios
• Strong computer skills
• Resourceful and creative self-starter
• Balance competing active deadlines in a fast-paced environment
• Superior organization skills
• Ability to work independently and as part of a team
• Strong interpersonal skills
• Fluent in SAEGIS, TO TEAS System, Microsoft 365, including Outlook, Word, Excel, and Teams
• Domain name experience a plus
• Advertising review experience a plus

This position is subject to export control laws.