Trademark Paralegal

Insight Global; New York (NY); On-site; USD 85,000 - 110,000; Full time

Job summary

Insight Global seeks a skilled Trademark Paralegal to support high-growth tech and life sciences clients. You will handle clearance, prosecution, deadlines, renewals, and maintenance, while coordinating with attorneys and clients across offices.

You will prepare communications, manage documents, and file with the USPTO, using WebTMS and relevant databases. A strong eye for detail and ability to multitask in a fast-paced environment are essential.

Qualifications

• College degree or paralegal certificate required
• 4+ years of trademark paralegal experience required
• Strong project management and organizational skills
• Excellent attention to detail and ability to multitask
• Good judgment, intuition and problem-solving abilities
• Strong written and verbal communication skills

Responsibilities

• Communicate with attorneys and clients regarding trademark clearance, prosecution, deadlines, renewals, and maintenance matters
• Prepare and send client communications, reports, and trademark status updates
• Coordinate with clients to collect supporting documents, signed forms, and specimens
• Review marketing materials and websites for acceptable trademark specimens
• Conduct preliminary trademark clearance searches using USPTO, SAEGIS, TrademarkNow, AI tools, and foreign resources
• Order and track comprehensive trademark searches from vendors
• Prepare, file and maintain applications and registrations before the USPTO (Sections 8, 9, 15; SWOs; Renewals)
• Draft and file non-substantive responses to Office Actions
• Report USPTO and foreign office notices to clients
• Coordinate with foreign counsel on searches, filings, prosecution, and maintenance
• Assist in planning and executing global trademark strategies
• Coordinate legalization of documents and obtain signatures for foreign filings
• Manage deadlines and docket items for US and foreign applications
• Prepare and manage trademark watch notices and subscriptions
• Oversee file transfers and document reviews
• Assist with TTAB actions and UDRP matters; gather supporting materials
• File and prosecute U.S. copyright applications; assist with copyright assignment
• Assist clients with U.S. Customs trademark recordation
• Maintain compliance with firm policies and procedures

Skills

Trademark paralegal experience

Project management

Attention to detail

Multitasking

Communication skills

Client management

Education

Bachelor's degree or paralegal certificate

Tools

WebTMS

USPTO filing

SAEGIS

TrademarkNow

Job description

• A college degree and/or paralegal certificate is required
• 4+ years of experience as a trademark paralegal is required
• Stellar project management and organizational skills
• Great attention to detail and ability to multitask
• Good judgment, intuition and problem-solving skills
• Strong written and verbal communication skills
• Reliable and dependable
• Client-focused mindset
• Professional and composed under pressure and in fast-paced environments
• Ability to learn quickly and work effectively and efficiently with clients, attorneys and staff across offices
• Proficiency in WebTMS and filing with USPTO
• Knowledge of U.S. and international trademark prosecution rules and procedures
• Ability and willingness to work overtime as needed

Job Description

As a Trademark Paralegal, you’ll support some of the most innovative companies in tech and life sciences, helping protect the brands behind breakthrough technologies. You’ll work on cutting-edge matters in a fast-paced, collaborative environment at a firm known for its deep IP expertise and commitment to clients shaping the future. Duties include the below:

• Communicate with attorneys and clients regarding trademark clearance, prosecution, deadlines, renewals, and maintenance matters
• Prepare and send client communications, reports, and trademark status updates (quarterly or upon request)
• Coordinate with clients to collect supporting documents, signed forms, and specimens
• Review marketing materials and websites for acceptable trademark specimens
• Conduct preliminary trademark clearance searches using USPTO, commercial databases (e.g., SAEGIS, TrademarkNow), AI tools, and foreign trademark office resources
• Order and track comprehensive trademark searches from vendors
• Prepare, file and maintain applications and registrations before the USPTO (Sections 8, 9, 15; Statements of Use; Renewals; Extensions; Assignments; POAs)
• Draft and file non-substantive responses to Office Actions for attorney review
• Report USPTO and foreign office notices (e.g., publication, allowance) to clients
• Communicate with foreign counsel regarding searches, filings, prosecution, and maintenance
• Assist in planning and executing global trademark registration strategies
• Coordinate legalization of documents and obtain signatures for foreign trademark filings
• Manage deadlines and docket items for U.S. and foreign applications and registrations, and maintain accurate records in WebTMS
• Prepare and manage trademark watch notices and subscriptions
• Oversee file transfers (intake and outbound), including docket and document reviews
• Assist with preparing and filing TTAB actions (oppositions, cancellations, appeals) and UDRP complaints; gather supporting materials for enforcement proceedings
• File and prosecute U.S. copyright applications; assist with copyright assignment documentation
• Assist clients with U.S. Customs and Border Protection trademark recordation
• Perform related duties as assigned or directed by supervisor
• Maintain compliance with all firm policies and procedures