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Core Competencies
Role fitCore Competencies
Use this summary to align your resume positioning with the role.
Demonstrates expertise in managing trademark-related deadlines, preparing and filing U.S. and international trademark applications, and utilizing trademark databases. Proficient in client communication and project management within a legal environment.
Highest-signal resume keywords
Trademark Application PreparationUSPTO Filing ProceduresTrademark Database ProficiencyClient CommunicationProject Management
ATS Keywords
Tailor your resumeApplicant Tracking System Keywords
Tip: use these terms in your resume and cover letter to boost ATS matches.
Hard Skills
Trademark ProsecutionTrademark MaintenanceTESSSAEGISCorsearchWIPO Global Brand DatabaseTEASESTTAUDRP ComplaintsTrademark Trial and Appeal Board Filings
Soft Skills
Organizational SkillsTime ManagementProject ManagementCustomer Service SkillsEffective Communication
Tools & Technologies
Microsoft WordMicrosoft ExcelMicrosoft OutlookWindows-Based SoftwareAI Tools
Certifications & Qualifications
Bachelor’s DegreeCertificate in Paralegal StudiesCertified Paralegal
Industry Keywords
Trademark LawUSPTOInternational Trademark ApplicationsTrademark EnforcementLegal Documentation
About the role
Key responsibilities & impact- Manage a full docket of trademark-related deadlines
- Send timely reminders to clients and attorneys and ensure deadlines are handled
- Conduct in-house trademark screening searches using TESS, SAEGIS, Corsearch, and WIPO Global Brand Database
- Prepare and file U.S. trademark applications, renewal applications, non-substantive office action responses, use declarations, extensions of time, and other USPTO filings
- Prepare and file international applications and extensions of international registrations with WIPO
- File UDRP complaints with the Forum and WIPO
- Record assignments, name changes, and lien releases with the USPTO’s Assignment Recordation Branch
- File documents with the Trademark Trial and Appeal Board and prepare non-substantive procedural filings
- Communicate with clients to collect information and instructions related to trademark searches and filings
- Instruct and supervise foreign law firms handling trademark prosecution and enforcement matters
- Coordinate preparation, execution, notarization, legalization, and apostille of documents filed with international trademark offices
- Investigate infringing uses of trademarks
- Perform intake of client requests for searches and filings and coordinate attorney handling
- Create customized trademark records reports for clients
- Support client development activities
- Report to the Co-Chair of the Office IP Department
Requirements
What you’ll need- Bachelor’s Degree required
- Certificate in Paralegal studies from an accredited institution preferred
- Equivalent experience considered
- Certified Paralegal a plus
- Minimum of seven years’ experience as a trademark paralegal at a law firm or five years’ experience as a trademark professional
- Broad understanding of the USPTO’s Trademark Electronic Application System and preparation and filing of trademark prosecution and maintenance documents via TEAS
- Experience with the USPTO’s Electronic System for Trademark Trials and Appeals and filing appeal and opposition/cancellation documents via ESTTA
- Effective organizational, time management, project management, communication, and timekeeping skills
- Experience creating technically proficient written communications without typographical errors
- Proficiency with technologies common in trademark and brand management
- Excellent customer service skills
- Proficiency with Windows-based software, Microsoft Word, Excel, Outlook, and other informational databases
- Understanding of AI capabilities, limitations, and responsible use in a professional environment
- Familiarity with, or willingness to learn, firm-approved AI tools such as Copilot, ChatGPT, or similar platforms
- Flexibility to work overtime as needed
- Ability to perform physical requirements including extended sitting, manual dexterity, filing, bending, standing, and lifting files
Benefits
Comp & perks- Competitive compensation
- Excellent benefits package
- Discretionary bonus eligibility for full-time employees
- Health insurance with an optional HSA
- Short-term disability
- Long-term disability
- Dental insurance
- Vision care
- Life insurance
- Healthcare and Dependent Care Flexible Spending Accounts
- 401K
- Vacation
- Sick time
- Employee assistance program
- Voluntary accident insurance
- Voluntary life insurance
- Voluntary disability insurance
- Voluntary critical illness and cancer insurance
- Pet insurance
- Commuter and Transit programs may be available in certain markets