Trademark Paralegal

Trademark Paralegal

Intellectual Property Department
Location: New York, NY (Hybrid)
Status: Full-Time, Non-Exempt

Position Overview

We are seeking an experienced Trademark Paralegal to join our Intellectual Property Department. This role assists attorneys and staff in delivering high-quality legal services to clients in an efficient and cost-effective manner. The ideal candidate is a self-starter with a can-do attitude, excellent organizational skills, and the ability to thrive in a fast-paced environment.

This is a full-time, non-exempt, hybrid position, resident in our New York office, offering excellent benefits. The role requires a minimum of three days per week (60%) in the office, with up to two days per week (40%) remote.

Essential Duties and Responsibilities

• Prepare domestic trademark applications, renewals, extensions of time, affidavits of use, and related filings for select clients
• Prosecute and maintain foreign trademark applications and registrations
• Prepare Powers of Attorney and handle legalization procedures
• Assist with prosecution of oppositions, cancellations, and investigations related to foreign trademarks
• Gather evidence and related materials in support of trademark matters
• Prepare computer-generated reports regarding worldwide trademark status
• Prepare and record name changes, assignments, foreign use and registration undertakings, and prior right agreements
• Conduct international clearance searches and draft opinion letters
• Create and maintain trademark databases and extranet sites
• Monitor developments in foreign trademark law and update internal databases accordingly
• Conduct knock-out searches to preliminarily determine the availability of trademarks
• Assist attorneys with prosecution and maintenance of U.S. trademark applications and registrations, including applications, renewals, extensions of time, statements of use, and Section 8 & 15 affidavits
• Assist in preparation of documentation for U.S. Office Action responses and oppositions
• Maintain docketing records for all trademark matters, including U.S. litigation
• Prepare quarterly, semi-annual, and annual computerized docket/status reports for select clients
• Review and approve invoices
• Serve as a liaison with clients regarding trademark matters
• Attend conferences and informational meetings related to new trademark laws and policies
• Meet with foreign associates in the office to discuss client matters and receive updates on legal developments
• Complete additional projects as assigned by the Director of Administration

Qualifications

• Bachelor’s degree required, or equivalent relevant work experience
• Minimum of five (5) years of experience in a law firm environment or related professional experience
• Thorough knowledge of trademark docketing procedures
• Thorough knowledge of U.S. and foreign trademark prosecution procedures, including PTO rules and forms
• Familiarity with billable time procedures and timekeeping systems such as CD Entry, CPI docketing, and Filesite is a plus
• Proficiency in Microsoft Word and Excel
• Experience with USPTO electronic filing required
• Strong ability to organize, prioritize, and manage multiple tasks under time constraints
• Excellent proofreading skills with attention to contextual, grammatical, typographical, and spelling accuracy
• Strong interpersonal and communication skills, with the ability to interact professionally with clients, attorneys, and staff via email, telephone, and in person

If you are interested in this opportunity, please reach out to Kiersten Ahle at Kahle@friedmanwilliams.com