Capstone Search Partners
Senior Trademark Paralegal
Capstone Search Partners, Bloomfield, Iowa, United States, 52537
Premier law firm: [to be disclosed]Job title: Trademark ParalegalPractice group: Intellectual PropertyDivision focus: Trademark ProsecutionCompensation: $100,000-$130,000Additional: Strong Bonuses + BenefitsJob type: Full-Time, Non-Exempt + Hybrid***Send resumes to: Hayley.christina@capstonesp.comThe OpportunityAre you passionate about intellectual property? Join our dynamic team and play a pivotal role in managing trademark portfolios, handling trademark clearance, and driving U.S. and foreign trademark prosecution.Must-Haves
Proven experience in U.S. and foreign trademark prosecution, maintenance, and renewal.
Bachelor’s Degree, Paralegal Certificate, OR significant experience in lieu of a degree.
Strong knowledge of trademark clearance databases and research tools like PATTSY, Saegis, Lexis/Nexis, and Westlaw.
Job Description
Trademark Prosecution & Maintenance: Prepare and file documents with the USPTO, including applications, office action responses, extensions, statements of use, affidavits, renewals, assignments, and powers of attorney.
Global Coordination: Work closely with foreign counsel on trademark applications and registrations, ensuring compliance with international requirements.
Client Communication: Maintain constant communication with clients and foreign counsel regarding clearance, filing instructions, office actions, and potential conflicts.
Trademark Clearance & Searches: Conduct preliminary and comprehensive searches using third-party platforms and common law databases.
Infringement & Enforcement: Assist with trademark enforcement, including potential oppositions, cancellations, and cease & desist letters.
Litigation Support: Provide crucial litigation support, gathering and organizing evidence for in-house attorneys and external counsel.
Database Management: Enter and update data in the trademark database (PATTSY), generating reports as needed.
Cost Estimates: Prepare cost estimates for new filings.
Customs Registrations: Prepare and file customs registrations and renewals with the U.S. Customs and Border Patrol.
Ownership Documentation: Prepare and record ownership and change of name documents related to trademarks.
Due Diligence: Conduct thorough due diligence on trademark portfolios.
Monitoring & Deadlines: Assist with monitoring attorney dockets, managing deadlines, and recording billable hours accurately.
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Proven experience in U.S. and foreign trademark prosecution, maintenance, and renewal.
Bachelor’s Degree, Paralegal Certificate, OR significant experience in lieu of a degree.
Strong knowledge of trademark clearance databases and research tools like PATTSY, Saegis, Lexis/Nexis, and Westlaw.
Job Description
Trademark Prosecution & Maintenance: Prepare and file documents with the USPTO, including applications, office action responses, extensions, statements of use, affidavits, renewals, assignments, and powers of attorney.
Global Coordination: Work closely with foreign counsel on trademark applications and registrations, ensuring compliance with international requirements.
Client Communication: Maintain constant communication with clients and foreign counsel regarding clearance, filing instructions, office actions, and potential conflicts.
Trademark Clearance & Searches: Conduct preliminary and comprehensive searches using third-party platforms and common law databases.
Infringement & Enforcement: Assist with trademark enforcement, including potential oppositions, cancellations, and cease & desist letters.
Litigation Support: Provide crucial litigation support, gathering and organizing evidence for in-house attorneys and external counsel.
Database Management: Enter and update data in the trademark database (PATTSY), generating reports as needed.
Cost Estimates: Prepare cost estimates for new filings.
Customs Registrations: Prepare and file customs registrations and renewals with the U.S. Customs and Border Patrol.
Ownership Documentation: Prepare and record ownership and change of name documents related to trademarks.
Due Diligence: Conduct thorough due diligence on trademark portfolios.
Monitoring & Deadlines: Assist with monitoring attorney dockets, managing deadlines, and recording billable hours accurately.
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