Trademark Paralegal

Novate Legal Search; Los Angeles (CA); On-site; USD 60,000 - 85,000; Full time

Job summary

Novate Legal Search is seeking an Intellectual Property Paralegal to support three timekeepers in the litigation and trademark departments. The role includes managing trademark applications, performing preliminary searches, and drafting correspondence, with diligence on due diligence and recording assignments.

The candidate should have IP paralegal experience, familiarity with USPTO procedures, and strong organizational and communication skills.

Qualifications

• 3-4 years of IP paralegal experience in a law firm or professional services.
• Knowledge of USPTO procedures preferred.
• Bachelor's degree preferred.
• Proficient in Word, Outlook, and Excel; records management software.
• Experience with iManage or ProLaw desired.
• Proficient knowledge of various Courts filing systems.
• Excellent verbal and written communication.
• Strong organizational skills and attention to detail.
• Ability to work under tight deadlines and maintain confidentiality.
• Background check clearance required.

Responsibilities

• Prepare trademark applications and maintenance documents with the USPTO (TEAS).
• Monitor and manage deadlines, including Office Actions, Statements of Use, and renewals.
• Review Office Actions, draft reporting correspondence summarizing issues, and assist with preparation of responses.
• Conduct preliminary trademark clearance searches and summarize results.
• Coordinate foreign filings and communications with international counsel.
• Navigate USPTO systems and utilize trademark search tools effectively.
• Assist with filings in TTAB matters, including oppositions, cancellations, and ex parte appeals.
• Track TTAB deadlines and scheduling orders.
• Organize case files, exhibits, and evidence.
• Support preparation of TTAB briefs and submissions (ESTTA).
• Assist with preparation and filing of pleadings and motions in federal court (CM/ECF).
• Support discovery processes, including document collection, review, and organization.
• Maintain litigation files and calendars.
• Prepare and file copyright applications.
• Assist with copyright clearance and basic licensing matters.
• Maintain accurate docketing of all IP deadlines using docketing software.
• Review and process docket-related correspondence and update docket entries.
• Generate periodic and ad hoc docket reports for attorneys and clients.
• Coordinate with vendors, government agencies, and foreign associates.
• Prepare reports, spreadsheets, and other documentation as needed.

Skills

Excellent communication

Strong organizational skills

Team player

Self-starter

Confidentiality

Education

Bachelor's degree preferred

Tools

Microsoft Office (Word, Outlook, Excel)

iManage / ProLaw

Job description

The Intellectual Property Paralegal supports three timekeepers (partners but may include counsel, associates, and team attorneys) in the litigation and trademark departments. The Intellectual Property Paralegal is also expected to provide support to other secretaries and attorneys when the need arises for assistance or coverage. On the trademark-prosecution side, the legal assistant will support attorneys in the clearance and prosecution of domestic trademarks. Will be responsible for managing all parts of trademark applications, including USPTO filings. The Intellectual Property Paralegal will do preliminary trademark searches and drafting correspondence, assist with due diligence assessments, and produce assignment paperwork for recording, such as notarization and legalizing documents.

QUALIFICATIONS

• 3-4 years of relevant experience as an Intellectual Property Paralegal with experience working in a law firm or professional services.
• Knowledge of USPTO (U.S. Patent and Trademark Office) procedures, rules and requirements preferred.
• Bachelor's degree preferred.
• Proficient in Microsoft Office – Word, Outlook, and Excel - records management software and general office equipment.
• Knowledge of iManage, ProLaw, or related software desired.
• Proficient knowledge of various Courts systems and filing requirements.
• Excellent communication skills – verbal and written required.
• Strong organizational skills and detail-oriented, able to organize, prioritize and complete simultaneous assignments with minimal supervision.
• Ability to establish effective working relationships throughout all groups.
• Must be a team player, a self-starter, and can perform well under tight deadlines.
• Ability to type with reasonable speed and accuracy.
• Ability to communicate effectively with individuals of all backgrounds.
• Ability to maintain confidentiality.
• Must be able to pass a background check.

Trademark Prosecution (U.S. & International)

• Prepare trademark applications and maintenance documents with the USPTO (TEAS)
• Monitor and manage deadlines, including Office Actions, Statements of Use, and renewals
• Review Office Actions, draft reporting correspondence summarizing issues, and assist with preparation of responses
• Conduct preliminary trademark clearance searches and summarize results
• Coordinate foreign filings and communications with international counsel
• Navigate USPTO systems and utilize trademark search tools effectively

TTAB Proceedings

• Assist with filings in TTAB matters, including oppositions, cancellations, and ex parte appeals
• Track TTAB deadlines and scheduling orders
• Organize case files, exhibits, and evidence
• Support preparation of TTAB briefs and submissions (ESTTA)

Trademark Litigation Support

• Assist with preparation and filing of pleadings and motions in federal court (CM/ECF)
• Support discovery processes, including document collection, review, and organization
• Maintain litigation files and calendars

Copyright Support

• Prepare and file copyright applications
• Assist with copyright clearance and basic licensing matters

Docketing & Case Management

• Maintain accurate docketing of all IP deadlines using docketing software
• Review and process docket-related correspondence and update docket entries
• Generate periodic and ad hoc docket reports for attorneys and clients
• Manage electronic and physical case files

Client & Administrative Support

• Draft, edit, and proofread correspondence, memos, and reports to ensure accuracy and quality
• Communicate with clients regarding filings, deadlines, and status updates
• Coordinate with vendors, government agencies, and foreign associates
• Prepare reports, spreadsheets, and other documentation as needed

Billing & Time Entry

• Input and edit attorney time entries and ensure proper client/matter allocation
• Assist with client billing, including preparation and review of proformas and supporting documentation

General Support

• Prioritize and manage assignments, coordinating with internal support teams as needed
• Proactively identify workflow efficiencies and process improvements
• Perform other duties as assigned