Capstone Search Partners
Senior Trademark Paralegal
Capstone Search Partners, Bloomfield, Iowa, United States, 52537
Premier law firm: [to be disclosed]
Job title: Trademark Paralegal
Practice group: Intellectual Property
Division focus: Trademark Prosecution
Compensation: $100,000-$130,000
Additional: Strong Bonuses + Benefits
Job type: Full-Time, Non-Exempt + Hybrid
***Send resumes to: Hayley.christina@capstonesp.com
The Opportunity
Are 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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Job title: Trademark Paralegal
Practice group: Intellectual Property
Division focus: Trademark Prosecution
Compensation: $100,000-$130,000
Additional: Strong Bonuses + Benefits
Job type: Full-Time, Non-Exempt + Hybrid
***Send resumes to: Hayley.christina@capstonesp.com
The Opportunity
Are 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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