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Seeking a highly skilled and detail-oriented Trademark Paralegal.
This role supports attorneys in the management, protection, and enforcement of Client’s worldwide trademark portfolio, spanning consumer brands and industrial businesses across multiple regions.
The Trademark Paralegal will play a key role in safeguarding Client’s brand assets by managing prosecution, enforcement, and clearance matters in collaboration with internal stakeholders and outside counsel around the globe.
Qualifications:
Bachelor’s degree or paralegal certificate.
Experience in trademark portfolio management, preferably with a global company or law firm managing large, international portfolios.
Knowledge of USPTO practice and international systems (Madrid Protocol, WIPO).
Experience with IP docketing and portfolio management software
Excellent organizational skills with the ability to prioritize global deadlines and high-volume work.
Strong written and verbal communication skills, with the ability to work effectively across time zones and cultures.
Proficiency with Microsoft Office Suite; experience with SAP or other enterprise systems is a plus.
Key Responsibilities:
Trademark Portfolio Management:
Maintain and update Client’s global trademark database, ensuring accuracy and completeness of records.
Prepare and file trademark applications, renewals, assignments, and recordals with the USPTO and through coordination with foreign counsel.
Assist with global clearance projects, including coordinating searches, reviewing results, and reporting to business stakeholders.
Trademark Enforcement & Brand Protection:
Monitor and analyze watch notices and online brand protection alerts for potential infringement.
Support enforcement strategies, including drafting cease-and-desist letters, coordinating takedowns, and liaising with outside counsel on opposition and cancellation proceedings.
Assist with domain name monitoring and enforcement.
Cross-Functional Support:
Act as primary point of contact for marketing, product development, and business teams regarding trademark usage, clearance, and brand protection guidance.
Prepare reports and portfolio updates for business leaders and global IP stakeholders.
Assist with internal training initiatives and compliance programs related to trademark use and brand protection.
Docketing & Deadlines:
Manage global docket of trademark deadlines, including renewals, oppositions, and other prosecution and enforcement actions.
Ensure timely filings and communicate key deadlines to attorneys and business partners.
Administrative & Legal Support:
Coordinate with outside counsel worldwide on filings, disputes, and budgetary matters.
Review invoices, manage accrual reporting, and support budget planning for global trademark spend.
Maintain organized and accessible electronic files in compliance with internal guidelines.