Fully Remote Trademark Paralegal

You must live within the USA.

Experience: minimum of 8 years up to 30 years of solid Trademark Paralegal Experience

1450 Billable hours requirement yearly

The firm values tenure!

Hours: 8:30-5 or 9-5:30, if you are on PDT

Hours 10:30-7 or 11-7:30 MDT

Hours: 9:30-6 or 10-6:30 if you are on CDT

Hours 11:30-8 or 12-8:30 EDT

Paid overtime: hours may be adjusted after training. This role will work with partners across the US.

$80,000-$140,000, depending on years of paralegal experience, location, skills, and education. Bonus potential when exceeding billable hours

The firm offers outstanding benefits, and you will work with dynamic and well-respected patent lawyers primarily in CA.

This firm has one of the world’s most robust integrated legal practices, with 45 offices worldwide. The firm is renowned for its local connections and global influence, delivering comprehensive legal services worldwide.

The firm seeks a trademark paralegal to join its Patent (IP) practice group. You will support partners and associates who work in the firm’s CA offices.

Please have 8+ years of trademark and copyright prosecution experience as a trademark paralegal working in IP law in a law firm.

Responsibilities:

  • Assist lawyers with managing large domestic and international trademark portfolios, trademark policing, disputes and enforcement, TTAB proceedings, copyright, social media (e.g., familiarity with dispute policies, DMCA notice, and takedown), and domain name dispute procedures.
  • Preparing and assisting in prosecuting trademark applications, including preparing and filing U.S. trademark applications and maintenance filings (including statements of use, extensions, and renewals) and Madrid Protocol applications.
  • Correspond directly with clients to report deadlines and report on the progress of applications and registrations.
  • Correspond with international counsel (including our foreign offices) to file and maintain trademark applications and registrations.
  • Work closely with our docketing department to ensure deadlines are calendared and handled.
  • Conducting, reviewing, and analyzing trademark searches in U.S. and international databases such as SAEGIS.
  • Review watch notices, report relevant hits to supervisors, and conduct investigations as needed.
  • Supporting due diligence on M&A transactions.

Academic and Professional Qualifications:

Qualified candidates must possess a Bachelor’s Degree, a Paralegal Certificate, or equivalent work experience.

Job Requirements:

  • Candidates must have experience with domestic and international trademark practice. They must also be able to work both independently and collaboratively, pay close attention to detail in a fast-paced, high-volume environment, prioritize work, and meet deadlines.
  • Experience and facility managing U.S. and international trademark portfolios, PTO filings, trademark searches, and docketing.
  • Detail-oriented, flexible, and computer proficient, with working knowledge of USPTO and WIPO procedures and systems, including TEAS, the Assignment Branch, the TTAB (Trademark Trial and Appeal Board), the Madrid Monitor, and other WIPO systems.
  • Highly proficient in Microsoft Word, Outlook, and Excel; experience with Inprotech docketing system and iManage preferred but not required.
  • Excellent verbal and written communication skills; strong proofreading, grammar, and organization skills; strong technical and computer capabilities.

Benefits:

37.5-hour workweek, paid overtime, very stable and growing, fantastic healthcare benefits, dental, vision, AD&D, STD, LTD, 20 days PTO, life insurance, ten holidays, discretionary bonus, 401k, and a very social, open, diverse firm culture, even for remote staff

in Fully Remote