Trademark Paralegal

Job Description

Trademark Paralegal | Robert Half

The Tone:
This is a full-time role at a prominent, mid-sized law firm, located in Midtown Manhattan. The firm operates in the heart of Manhattan and handles a wide range of legal matters. This Trademark Paralegal position is critical for supporting the firm’s busy legal team in managing domestic and international trademark matters, ensuring all filings, prosecution, and maintenance activities remain on track. The role directly contributes to the firm’s ability to effectively serve its clients by maintaining organized and compliant trademark portfolios.

The TL;DR
• Role: Experienced Professional
• Type: Full-time
• Location: Hybrid, New York, NY
• Pay: $100000–$145000 yearly
• Mission: This role ensures the efficient management of trademark filings, coordination with stakeholders, and tracking of prosecution and maintenance activities throughout the trademark lifecycle.

What You’ll Actually Do
• Filings Management: Manage U.S. and international trademark filings, overseeing the entire lifecycle from initial submission through prosecution, renewals, and necessary ownership updates.
• Docket Monitoring: Monitor critical docket activity, meticulously track deadlines, and compile comprehensive status reports to effectively support attorneys and address client needs.
• Stakeholder Communication: Facilitate clear and timely communication with clients, foreign associates, and internal legal teams, providing guidance on filing requirements, impending deadlines, and subsequent steps for various trademark matters.
• Drafting Support: Prepare detailed draft responses to office actions and develop all related correspondence for thorough attorney review, ensuring accuracy and compliance.
• Specimen Examination: Examine trademark specimens and associated supporting materials with precision to confirm their compliance with established filing standards and regulatory requirements.
• Legal Research: Conduct thorough legal and factual research pertaining to complex trademark matters and ongoing proceedings, contributing essential information to case development.
• Administrative Support: Provide comprehensive administrative support, including accurate data entry, meticulous invoice coordination, oversight of deposit accounts, and proactive monitoring of rule or practice updates.
• TTAB Proceedings: Assemble and submit all required documents for Trademark Trial and Appeal Board (TTAB) matters, encompassing both oppositions and cancellations.
• Document Legalization: Coordinate notarization processes, obtain necessary corporate charter documents, and arrange for the legalization of materials for their proper use in both U.S. and international matters.

The Must-Haves
• Background: An experienced Trademark Paralegal with a strong understanding of domestic and international trademark law and processes.
• Experience: Demonstrated ability to manage filings throughout the trademark lifecycle, coordinate with various parties, and maintain prosecution and maintenance activities on track.
• Skills: Strong organizational skills, sound judgment, attention to detail, and the ability to balance accuracy with deadlines in a fast-paced legal environment.