Trademark Paralegal

Marshall Law Group - TradeMarks The Spot; New York (NY); Remote; USD 34,440 - 48,216; Part time

Job summary

A legal services firm based in New York is looking for a remote Trademark Paralegal. This role involves supporting a Trademark Attorney with responsibilities including filing and managing trademark applications, client communication, and docket management. The ideal candidate will have 2-5 years of U.S. trademark experience, proficiency in relevant software, and strong communication skills. Flexibility in hours is offered, with expected availability aligned to Eastern Standard Time for 10 hours a week.

Qualifications

• 2-5 years of U.S. trademark experience at a law firm or corporate legal department.
• Current USPTO trademark knowledge essential.
• Ability to work independently and manage multiple tasks in a fast-paced environment.

Responsibilities

• Liaise with clients for trademark filings and management.
• Prepare and prosecute U.S. trademark applications.
• Manage and maintain trademark docket for U.S. and non-U.S. matters.

Skills

U.S. trademark experience

Attention to detail

Multitasking

Interpersonal skills

Microsoft Office Suite proficiency

Tools

Dockettrak

Corsearch

Job description

Primary responsibilities will be trademark paralegal duties to support a single Trademark Attorney based in New York along with supporting the other trademark paralegals on the team. This is a contract, fully remote position. Applicants must have the necessary computer, software, and office essentials to work in an effective manner. The position requires approximately 10 hours per week. Hours and days of work are flexible but prefer times compatible with 8:00 am – 9:00 pm EST and availability of 4 weekdays and 1 day on the weekend (could just be to check on emails though).

Essential Duties and Responsibilities:

• Liaise with clients as the first line of communication for trademark filings, prosecution, renewals and conflicts (oppositions, cancellations, infringements) and coordinate management of same with Attorney;
• Prepare, file and prosecute U.S. trademark applications including responding to office actions, filing statements of use, extensions of time to oppose, oppositions, assignments, renewals and proof of use affidavits and related documents with the USPTO;
• Review and understand trademarks search reports and respond to client inquiries as necessary;
• Coordinate non-US trademark searches and filings with outside Foreign Associates;
• Manage and maintain trademark docket for U.S. and non-US trademark matters (Dockettrak);
• Investigate trademark infringement matters including drafting of cease and desist letters or takedown filings as necessary and/or coordinating with non-U.S. counsel for same.

Requirements:

• 2-5 years of U.S. trademark experience at a law firm or as part of a corporate legal department
• Current USPTO trademark knowledge a must
• Experience with Dockettrak software or an equivalent IP docketing program
• Ability to multi-task and prioritize work in a fast-paced environment
• Ability to work independently and complete projects in a timely manner
• Ownership and ability to “run point” on projects assigned
• Good attention to detail and precise written work product
• Proficiency with Microsoft Office Suite
• Proficiency with USPTO filing requirements and form knowledge
• Possess strong interpersonal skills, professionalism and presentation skills and ability to communicate effectively with clients
• Self-starter attitude, combined with the ability to exercise independent judgment and critical thinking
• Trademark searching experience a plus (Corsearch)