Trademark Paralegal

National Basketball Association (NBA); New York (NY); Vor Ort; USD 90.000 - 110.000; Vollzeit

Zusammenfassung

The National Basketball Association (NBA) is seeking a Trademark Paralegal to support the global brand by managing the trademark portfolio and filing USPTO documents. You will work with NBA attorneys, IP managers, and outside counsel in a fast-paced legal team.

You will also lead digital brand enforcement, audit online marketplaces for counterfeit goods, draft notices, and coordinate takedowns across platforms, ensuring rapid response during league events.

Qualifikationen

• At least 5 years of trademark or IP paralegal experience in a law firm IP practice or an in-house legal department.
• Working knowledge of USPTO procedures, TEAS filings, TTAB practice, and Madrid Protocol/WIPO filings.
• Knowledge of trademark filing processes, international procedures, and foreign associate management.
• Proficiency with IP docketing software such as CPI, Anaqua, or Pattsy, Memotech is a plus.
• Direct experience or familiarity with digital brand protection platforms and online marketplace takedown tools.
• Sharp visual attention to detail for tracking online infringements, collecting evidence of use, and matching product photos.
• Familiarity with document management systems and case-tracking databases.
• Advanced proficiency in Microsoft Office Suite, Adobe Acrobat, and online research tools.
• Fluency in core office productivity software and case-tracking databases.
• Excellent time-management skills to handle a diverse workflow spanning steady filings, prosecution, oppositions, and project-based digital audits.

Aufgaben

• Be an active member of the IP team that manages the end-to-end lifecycle of the worldwide trademark portfolio of the NBA and its affiliated leagues to protect the value of the company’s brand and global IP assets.
• Prepare and file various USPTO documents, including trademark applications, Requests for Extensions of Time, Statements of Use, Amendments, Section 8 & 15 Affidavits of Use, Declarations of Incontestability, and Renewals.
• Draft responses to USPTO Office Actions (including TEAS filings) and international Office Actions and notifications.
• Research and evaluate potential specimens of use for submission to the USPTO and to foreign jurisdictions that require a Declaration of Continued Use.
• Assist in overseeing U.S. and international trademark portfolios, including communicating with foreign outside counsel and coordinating directly with clients.
• Assist with the preparing, filing, and managing TTAB proceedings.
• Audit e-commerce websites and digital marketplaces for counterfeit and unlicensed merchandise.
• Draft and submit IP infringement notices and demand letters, including assisting with a high volume of demand letters targeting print-on-demand networks and standalone international websites.
• Track online takedown requests to ensure compliance and conduct necessary follow-up, including managing both automated vendor platforms and manual, time-intensive URL information collection.
• Manage targeted platform takedowns requiring deep web research, with a focus on TikTok Shop, Instagram sponsored ads, and marketplace account resellers.
• Assist in promptly and effectively addressing periodic digital enforcement spikes (e.g., following high-profile player transfers, team milestones, and league championship events).
• Provide event-based enforcement support, including ongoing anti-piracy and brand protection enforcement targeting unlicensed event promoters during annual NBA All-Star and related events.
• Assist in onboarding new digital enforcement portals, online marketplaces, platforms, and third-party league vendors, including uploading bulk/ large-scale sets of trademark registration certificates.
• Work with third-party technology vendors to streamline, coordinate, and execute global digital brand protection initiatives.
• Prepare regular reports detailing enforcement efforts, evaluating localized campaign impacts, analyzing data, and tracking IP enforcement expenditures.
• Provide support in connection with other online IP enforcement matters, including domain name disputes, UDRP proceedings, and ambush marketing threats.
• Assist in managing state and federal customs enforcement efforts by gathering/uploading photographic evidence, tracking active case records, and organizing investigative documentation.

Kenntnisse

IP docketing software

Trademark law

Madrid Protocol/WIPO filings

Office action drafting

Digital brand protection

MS Office Proficiency

Document management systems

Time management

Ausbildung

University degree or professional paralegal qualification

Tools

CPI

Anaqua

Pattsy

Memotech

Jobbeschreibung

WORK OPTION: The NBA currently provides eligible employees the option of working remotely one day per week.

About the Role

We are seeking a Trademark Paralegal to join our fast-paced legal team. In this role, you will balance strategic portfolio maintenance - including preparing various submissions to the U.S. Patent and Trademark Office (USPTO) and Trademark Trial and Appeal Board (TTAB) - with active digital brand enforcement. We are looking for an independent self-starter who has deep familiarity with IP docketing software and a sharp eye for identifying marketplace infringements. You will work closely with NBA attorneys, intellectual property managers, and outside counsel to serve a key role in safeguarding our global brand.

Key Responsibilities

Trademark Prosecution & Portfolio Management

• Be an active member of the IP team that manages the end-to-end lifecycle of the worldwide trademark portfolio of the NBA and its affiliated leagues to protect the value of the company’s brand and global IP assets.
• Prepare and file various USPTO documents, including trademark applications, Requests for Extensions of Time, Statements of Use, Amendments, Section 8 & 15 Affidavits of Use, Declarations of Incontestability, and Renewals.
• Draft responses to USPTO Office Actions (including TEAS filings) and international Office Actions and notifications.
• Research and evaluate potential specimens of use for submission to the USPTO and to foreign jurisdictions that require a Declaration of Continued Use.
• Assist in overseeing U.S. and international trademark portfolios, including communicating with foreign outside counsel and coordinating directly with clients.
• Assist with the preparing, filing, and managing TTAB proceedings.

Digital Brand Enforcement

• Audit e-commerce websites and digital marketplaces for counterfeit and unlicensed merchandise.
• Draft and submit IP infringement notices and demand letters, including assisting with a high volume of demand letters targeting print-on-demand networks and standalone international websites.
• Track online takedown requests to ensure compliance and conduct necessary follow-up, including managing both automated vendor platforms and manual, time-intensive URL information collection.
• Manage targeted platform takedowns requiring deep web research, with a focus on TikTok Shop, Instagram sponsored ads, and marketplace account resellers.
• Assist in promptly and effectively addressing periodic digital enforcement spikes (e.g., following high-profile player transfers, team milestones, and league championship events).
• Provide event-based enforcement support, including ongoing anti-piracy and brand protection enforcement targeting unlicensed event promoters during annual NBA All-Star and related events.
• Assist in onboarding new digital enforcement portals, online marketplaces, platforms, and third-party league vendors, including uploading bulk/ large-scale sets of trademark registration certificates.
• Work with third-party technology vendors to streamline, coordinate, and execute global digital brand protection initiatives.
• Prepare regular reports detailing enforcement efforts, evaluating localized campaign impacts, analyzing data, and tracking IP enforcement expenditures.
• Provide support in connection with other online IP enforcement matters, including domain name disputes, UDRP proceedings, and ambush marketing threats.
• Assist in managing state and federal customs enforcement efforts by gathering/uploading photographic evidence, tracking active case records, and organizing investigative documentation.

Qualifications & Requirements

• At least 5 years of trademark or intellectual property paralegal experience in a law firm IP practice or an in-house legal department.
• Working knowledge of USPTO procedures, TEAS filings, TTAB practice, and Madrid Protocol/WIPO filings.
• Knowledge of trademark filing processes, international procedures, and foreign associate management.
• Proficiency with IP docketing software such as CPI, Anaqua, or Pattsy, (experience with Memotech is a plus).
• Direct experience or familiarity with digital brand protection platforms and online marketplace takedown tools.
• Sharp visual attention to detail for tracking online infringements, collecting evidence of use, and matching product photos.
• Familiarity with document management systems and case-tracking databases.
• Advanced proficiency in Microsoft Office Suite, Adobe Acrobat, and online research tools.
• Fluency in core office productivity software, document management databases, and case-tracking databases.
• Excellent time-management skills to handle a diverse workflow spanning steady filings, prosecution, oppositions, and project-based digital audits.

Education:

• University degree or a professional paralegal qualification.

Salary Range:

$90,000-$110,000

Job Posting Title:

Manager

Employees currently are eligible to receive an annual discretionary performance bonus, awarded at the sole discretion of the Company and subject to any terms and conditions set by the Company. Employees and/or eligible dependents may be eligible to participate in the following Company-sponsored employee benefit programs: medical; dental; vision; life/AD&D insurance; short- and long-term disability; fertility and family-forming assistance; wellbeing allowance; educational assistance; mental health coaching/therapy; tax advantaged accounts such as HSA and healthcare/dependent care FSAs; a 401(k) retirement plan; and time off benefits that include vacation, sick time, and personal days.

We Consider Applicants For All Positions On The Basis Of Merit, Qualifications And Business Needs, And Without Regard To Race, Color, National Origin, Religion, Sex, Gender Identity, Age, Disability, Alienage Or Citizenship Status, Ancestry, Marital Status, Creed, Genetic Predisposition Or Carrier Status, Sexual Orientation, Veteran Status, Familial Status, Status As A Victim Of Domestic Violence Or Any Other Status Or Characteristic Protected By Applicable Federal, State, Or Local Law.

The NBA is committed to providing a safe and healthy workplace. To safeguard our employees and their families, our visitors, and the broader community from COVID-19, and in consideration of recommendations from health authorities and the NBA’s own advisors, any individual working onsite in our New York and New Jersey offices must be fully vaccinated against COVID-19. The NBA will discuss accommodations for individuals who cannot be vaccinated due to a medical reason or sincerely held religious belief, practice, or observance.

About the NBA

The National Basketball Association (NBA) is a global sports and media organization with the mission to inspire and connect people everywhere through the power of basketball. Built around five professional sports leagues: the NBA, WNBA, NBA G League, NBA 2K League and Basketball Africa League, the NBA has established a major international presence with games and programming available in 214 countries and territories in 60 languages, and merchandise for sale in more than 200 countries and territories on all seven continents. NBA rosters at the start of the 2024-25 season featured a record-tying 125 international players from a record-tying 43 countries. NBA Digital’s assets include NBA TV, NBA.com, the NBA App and NBA League Pass. The NBA has created one of the largest social media communities in the world, with more than 2.3 billion likes and followers globally across all leagues, team and player platforms. NBA Cares, the NBA’s global social responsibility platform, partners with renowned community-based organizations around the world to address important social issues in the areas of education, inclusion, youth and family development, and health and wellness.