Trademark Specialist (USPTO)

Infosoft, Inc.; Irvine (CA); Hybrid; USD 55,000 - 75,000; Full time

Job summary

Infosoft Inc. is seeking a Trademark Specialist (USPTO) to support a corporate legal team acting as an internal law firm within a global IP program. The role involves handling domestic and foreign trademark filings, docketing, and collaboration with IP attorneys on complex projects.

The ideal candidate will have strong organizational and communication skills, the ability to multitask, and familiarity with USPTO processes. This is a hybrid role with Irvine, CA duties and occasional on-site visits.

Qualifications

• Minimum 1 year of Trademark Paralegal or Analyst experience.
• Familiar with USPTO forms and deadlines for trademark matters.
• Proficient in Microsoft Office Suite.
• Ability to work independently and prioritize tasks.
• Strong communication and organizational skills.
• Experience with IP management tools and document management software.
• Team-oriented with professional interpersonal skills.

Responsibilities

• Prepare and file domestic trademark applications and related correspondence.
• Prepare and file foreign trademark applications through foreign counsel and related correspondence.
• Conduct searching and analysis of search results for proposed new trademarks.
• Maintain all trademark files.
• Respond to trademark inquiries from internal marketing representatives.
• Track deadlines for attorneys via IP management system and manage docketing.
• Prepare trademark-related documents in MS Word, Excel, and PowerPoint.
• Interact professionally with Edwards employees and outside counsel.

Skills

Trademark paralegal

Organizational skills

Communication skills

Independent worker

Strategic thinking

Education

High School diploma

Associate or Bachelor's degree preferred

ABA Paralegal Certification preferred

Tools

Microsoft Office

IP management software

Document management software

Anaqua

Foundation IP

Job description

Location: Irvine, CA (Remote- infrequent on-site visits only when required)

Our Client is a Global medical device Manufacturer.

We are looking for a Trademark Specialist (USPTO) to assist a leading corporate legal team that functions as an internal law firm within a sophisticated IP program. The ideal candidate will be experienced and highly skilled in working to administer and conduct a global trademark program internally, with minimal assistance of outside counsel in the United States. The Paralegal (Trademark) will prepare and file trademark applications and related documents with the U.S. Patent & Trademark Office, administer all trademark docketing, and work with IP attorneys on more complex projects, such as global trademark oppositions.

The role requires a proactive self-starter who possesses exceptional multitasking and communication skills, both oral and written. A high level of professionalism, organization, and flexibility are essential. This role also requires a friendly, energetic person with high integrity who can represent the legal team with professionalism at all times, including when interacting with company employees. Must possess excellent organizational skills and exercise strong attention to detail.

• Prepare and file domestic trademark applications and related correspondence
• Prepare and file, through foreign counsel, foreign trademark applications and related correspondence
• Conduct searching and analysis of search results for proposed new trademarks
• Maintain all trademark files
• Respond to trademark inquiries from internal marketing representatives
• Secure necessary signature/authorizations and approved documentation for domestic and foreign trademark applications, renewals and any other purpose
• Responsible for all trademark docketing; lead the effort to track and meet trademark deadlines for attorneys from the company’s IP management system
• Prepare trademark-related documents in MS Word, Excel, PowerPoint, and other systems
• Interact professionally with all levels of Edwards employees and outside counsel

Requirements:

• A High School diploma or equivalent is required.
• Minimum 1 year of Trademark Paralegal or Analyst experience is required.
• Must be completely familiar with USPTO forms and all types of deadlines for trademark matters
• Ability to work efficiently, proactively, take initiative, execute instructions, organize and prioritize work, and be a team player
• Must be proficient in Microsoft Office Suite (including Outlook, Word, Excel, and PowerPoint)
• Experience with IP management software and document management software
• Effective interpersonal and communication skills, including both written and verbal communication skills
• Excellent problem-solving capabilities
• Ability to work independently and prioritize with minimal daily instruction
• Ability to think strategically in order to improve current processes

Preferred Qualifications:

• An associate or bachelor’s degree is preferred.
• ABA Paralegal Certification
• Experience with Anaqua or Foundation IP Trademark Portfolio Management Tool