Trademark Paralegal

Plona Partners; Roseland (NJ); On-site; USD 55,000 - 85,000; Full time

Job summary

Plona Partners seeks a Trademark Paralegal to support matters, clients and projects, performing routine activities with limited attorney supervision.

You will conduct trademark searches, review watch notices, assist in proceedings, prepare Office Action responses, and coordinate filings with the USPTO and social platforms. Strong organization and knowledge of US and international trademark practice are essential.

Qualifications

• Experience drafting and reviewing trademark filings and responses.
• Ability to manage high-volume document production to US PTO standards.
• Strong attention to deadlines and risk management.

Responsibilities

• Conduct preliminary US searches and worldwide searches for trademark availability.
• Reviews and distributes trademark watch notices for attorneys.
• Assists in infringement, opposition, and related proceedings.
• Prepares draft reporting letters and responses to Office Actions.
• Reviews specimens and prepares draft declarations.
• Coordinates take-down notices with social media platforms.
• Prepares assignments and records materials with the USPTO.
• Prepares trademark status summary reports.
• Prepares worldwide cost estimates for filing and maintenance of trademarks.

Skills

Trademark prosecution knowledge

Deadline management

Document preparation

MS Word

Education

Paralegal certificate or associate degree

Tools

PDF conversion tools

Document management software

MS Word

MS Outlook

Job description

The Trademark Paralegal is assigned to specific matters, clients, projects and/or specified routine activities and determines and prepares appropriate work product, sometimes with minimal attorney supervision.

Job Responsibilities

• Conducts preliminary US searches and worldwide searches for trademark availability
• Reviews and distributes, as needed, trademark watch notices for all clients to attorneys for further review and follow up
• Conducts trademark use investigations and other due-diligence related activities
• Assists in infringement, opposition, and related proceedings, including discovery-related activities, cite checking and filing
• Prepares draft reporting letters and responses to Office Actions for attorney review
• Reviews specimens and prepares draft declarations
• Coordinates take-down notices with numerous social media platforms
• Prepares formal assignments and agreements for trademark matters and records relevant materials with the United States Patent and Trademark Office
• Prepares trademark status summary reports
• Prepares worldwide cost estimates for filing and maintenance of trademarks

Knowledge, Skills and Abilities

• General knowledge of domestic and international trademark prosecution law
• Demonstrated ability to prepare a heavy volume of accurate and complete documents that meet US Trademark Office requirements
• Demonstrated ability to identify and meet deadlines based on trademark office correspondence, client instructions, and other documents, and manage associated risks by coordinating with attorneys to file in advance of due dates whenever possible.
• Demonstrated Intermediate PC knowledge, MS Word, PDF conversion tools, MS Outlook, and document management software