Trademark Paralegal

CF Legal Recruiting and Staffing; Roseland (NJ); On-site; USD 70,000 - 90,000; Full time

Job summary

CF Legal Recruiting and Staffing is assisting a top national law firm seeking a Trademark Paralegal for its Northern New Jersey office. The role supports US and international trademark functions, including searching, clearance, prosecution, maintenance, and enforcement.

Key duties include drafting and filing US trademark applications, coordinating with foreign counsel, and preparing use/renewal documents, with experience in USPTO systems and IP diligence.

Qualifications

• Bachelor's degree and/or Paralegal Certificate.
• 4+ years of Paralegal experience in a law firm.
• Provide excellent client service with a positive, professional attitude.
• Knowledge of USPTO trademark systems (TESS, TEAS, TTAB).
• Experience with copyright applications is a plus.
• Familiarity with WHOIS, UDRP/URS is a plus.
• Knowledge of Outlook, Word, Excel, PowerPoint.

Responsibilities

• Support US and international trademark functions including searching, clearance, prosecution, maintenance, and enforcement.
• Conduct preliminary clearance searches and draft analyses.
• Draft and file US trademark applications and describe goods/services.
• Coordinate with foreign counsel to file and maintain applications and respond to office actions.
• Coordinate with clients' marketing teams for evidence of use for US/global filings.
• Prepare and file use and renewal documents in USPTO.
• Review watch service reports and research potentially infringing marks.
• Draft responses to USPTO Office Actions and TTAB proceedings.
• Support transactional trademark matters including M&A diligence and portfolio audits.
• Prepare draft trademark assignments and review USPTO abstracts.

Skills

Paralegal experience

Client service

Attention to detail

Interpersonal skills

Legal research

Communication

Education

Bachelor's degree

Paralegal Certificate

Tools

Corsearch

Saegis

CPi docket

MS Office

Job description

Attention New Jersey Trademark Paralegals…skip the commute to the city and take the next step in your career with a top national law firm.

One of the most sophisticated law firms in the United States, with over 400 lawyers and 300 business services professionals serving clients across the country is seeking a Trademark Paralegal for their Northern NJ office.

What You Will Do:

The Trademark Paralegal is responsible for supporting US and international trademark functions, including all aspects of trademark searching, clearance, prosecution, maintenance, and enforcement.

• Conduct preliminary trademark clearance searches; conduct preliminary investigations of potentially conflicting marks; review comprehensive US trademark search reports and prepare first draft of analysis in form of email summaries and opinion letters.
• Experience with all USPTO search and electronic filing systems.
• Proficient with computerized trademark search databases, particularly Corsearch and Saegis platforms.
• Draft and file US trademark applications, including research and review of client materials, and prepare descriptions of goods and services for applications.
• Communicate with foreign counsel to file and maintain trademark applications, renew registrations, and respond to office actions.
• Coordinate with clients' marketing teams to obtain evidence of use and other supporting information for US and global applications and renewals.
• Prepare and file use and renewal documents in USPTO.
• Review trademark watch service reports and conduct preliminary research of potentially infringing marks.
• Prepare draft responses to Office Actions for the USPTO and coordinate with foreign counsel to respond to refusals.
• Support TTAB proceedings and enforcement matters, including oppositions, cancellations, counterfeit programs, online takedowns, and customs recordations.
• Support transactional trademark matters, including M&A diligence, portfolio audits, chain-of-title remediation, and post-closing integration.
• Prepare draft form trademark assignments and conduct review of USPTO assignment abstracts to examine chain of title and lien status.
• Experience drafting copyright applications, reviewing copyright security interest agreements and conducting copyright searches and diligence a plus.
• Knowledge of WHOIS investigations, and UDRP/URS proceedings a plus.

Skills, Knowledge, and Abilities:

• Bachelor's degree and/or Paralegal Certificate.
• 4+ years of Paralegal experience in a law firm environment.
• Provide excellent client service by maintaining a positive and professional attitude and cooperative relationship with firm colleagues, as well as when interacting with external clients and contacts.
• Knowledge of pertinent USPTO trademark systems, including Trademark Electronic Search System (TESS), Trademark Electronic Application System (TEAS), Trademark Electronic Application
• System International (TEASi), Trademark Status and Document Retrieval system (TSDR), and Trademark Trial and Appeal Board (TTAB).
• Knowledge of WIPO International forms and search databases.
• Knowledge of Outlook, Microsoft Word, Office, Excel, PowerPoint, Corsearch, Saegis and CPi docket software.