Trademark Paralegal

Lowenstein Sandler; Salt Lake City (UT); Hybrid; USD 85,000 - 115,000; Full time

Benefits offered by this job

Health insurance

Dental insurance

Vision insurance

Life insurance

Disability insurance

401K

Paid time off

Job summary

Lowenstein Sandler LLP is seeking a Trademark Paralegal to support US and international trademark functions, including clearance, prosecution, maintenance, and enforcement. The role requires drafting and filing USPTO applications, preparing descriptions of goods and services, and coordinating with foreign counsel.

The position offers hybrid work in Roseland, NJ or Salt Lake City, UT, with full-time hours and a comprehensive benefits package. Travel is not required.

Qualifications

• 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 USPTO trademark systems, including TESS, TEAS, TEASi, TSDR, TTAB.
• Knowledge of WIPO forms and search databases.
• Knowledge of Outlook, Microsoft Word, Office, Excel, PowerPoint, Corsearch, Saegis and CPi docket software.

Responsibilities

• Support US and international trademark functions including searching, clearance, prosecution, maintenance, and enforcement.
• Draft and file US trademark applications and prepare (goods/services) descriptions for applications.
• Coordinate with foreign counsel to file and maintain trademark applications and respond to office actions.
• Prepare and file use and renewal documents in USPTO; coordinate with clients’ marketing teams for evidence of use.

Skills

Paralegal experience

Client service

Attention to detail

Communication skills

Remote work ability

Education

Bachelor’s degree or Paralegal Certificate

Tools

Outlook

Microsoft Word

Excel

PowerPoint

Corsearch

Saegis

CPi docket

Job description

Who We Are:

Lowenstein Sandler is a one of the most sophisticated law firms in the United States, with over 400 lawyers and 300 business services professionals serving clients from offices in New York, Palo Alto, Roseland, Salt Lake City, San Francisco, Washington, D.C., and Wilmington. We recruit candidates who seek a collaborative, entrepreneurial culture that prioritizes our clients, our colleagues, and the communities where we work and live. Committed to career development and to a diverse and inclusive workplace, the firm offers many programs and opportunities for personal and professional growth. We seek professionals for our business services group who share these values.

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.

Essential Job Requirements:

• 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.
• Excellent written and verbal communication skills and the ability to partner effectively with attorneys and clients.
• High level of attention to detail, judgment, and discretion in handling confidential matters.
• Ability to prioritize work for an active docket of matters and adjust priorities, as needed.
• Ability to exhibit flexibility and work in a fast-paced environment.
• Able to work remotely, as permitted, and ensure that tasks are completed timely and efficiently; maintain regular communication with attorneys and colleagues while working remotely. Able to follow firm policies and procedures while working remotely.
• Ability to coordinate multiple projects simultaneously.

Office Location: Roseland, NJ or Salt Lake City, UT (Hybrid)

Schedule: Full-time, Monday through Friday

• NJ: 9:00 AM - 5:00 PM ET
• UT: 9:00 AM - 5:30 PM MT

Amount of Travel Required:None

The expected salary range for candidates meeting the requirements of this position is $85,000 to $115,000. The range provided is the salary that Lowenstein Sandler in good faith believes at the time of this posting that it is willing to pay for the advertised position. Exact compensation will be determined based on individual candidate qualifications and location. Our benefits package includes coverage options for medical, dental, vision, prescription drug, life insurance, disability, FSAs, 401K, and paid time off.

Disclaimers:

This job description is not designed to cover or contain a comprehensive listing of all activities, duties, or responsibilities required by employee.

Lowenstein Sandler LLP is not accepting resumes from search firms for this position. Regardless of past practice, all resumes submitted by search firms are to be deemed the sole property of Lowenstein Sandler LLP, and no fee will be paid in the event the candidate is hired by Lowenstein Sandler LLP as a result of the referral.

Lowenstein Sandler LLP is committed to equal employment opportunity and providing reasonable accommodations to applicants with physical and/or mental disabilities. We value and encourage diversity and solicit applications from all qualified applicants without regard to race, color, gender, sex, age, religion, creed, national origin, ancestry, citizenship, marital status, sexual orientation, physical or mental disability, medical condition, veteran status, gender identity, genetic information, or any other characteristic protected by federal, state, or local law.