Trademark Paralegal

Womble Bond Dickinson (US) LLP is seeking a Trademark Paralegal to join their Intellectual Property team in NYC. This position would be responsible for assisting with trademark due diligence, filing documents with the USPTO, and monitoring deadlines. The ideal candidate for this role would have at least five years of related experience in a law firm, or law department within a corporation. 

 

RESPONSIBILITIES:

• Prepare documents for attorney review and filing with USPTO including Applications, Office Action Responses, Declarations of Use and Incontestability, Applications for Renewal, and Extensions of Time to Oppose
• Draft appropriate identifications of goods and services and identify appropriate specimens
• Order, conduct and review trademark searches and prepare preliminary summaries
• Manage execution and legalization of documents
• Review investigative summaries and prepare reports and recommendations
• Correspond with foreign associates regarding searches, filing and prosecuting applications, oppositions, registration maintenance and transfers
• Communicate with clients regarding trademark maintenance requirements
• Assist with trademark due diligence, prepare and record assignments and undertake other chain of title activities related to corporate transactions
• Monitor watch notices, deadlines and coordinate with docketing team (docketing not required)
• Coordinate trademark opposition, cancellation and other trademark disputes
• Process invoices from foreign associates and other vendors

REQUIREMENTS: 

• Bachelor’s degree/Paralegal Certificate preferred with five years related experience in law firm or law department including all aspects of USPTO trademark work (prosecution, maintenance, and renewals) as well as TTAB proceedings (oppositions and cancellations).
• Must be proactive, dedicated, positive and energetic
• Excellent written and oral communications skills
• Experience handling large portfolios
• Strong computer skills
• Resourceful and creative self-starter
• Balance competing active deadlines in a fast-paced environment
• Superior organizational skills
• Ability to work independently and as part of a team
• Strong interpersonal skills
• Fluent with SAEGIS, PTO TEAS System, Microsoft 365, including Outlook, Word, Excel and Teams
• Domain name experience a plus
• Advertising review experience a plus

 

COMPENSATION: The estimated salary range for 5-10 years of experience is approximately $74,000-$108,000. This salary may be higher or lower depending upon the specific location, internal equity, and years of experience.