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Regional law firm based in San Jose, CA is seeking a detail-oriented Trademark Paralegal to support attorneys in the management of domestic and international trademark matters. This hybrid role requires regular on-site work and offers the opportunity to work closely with a collaborative legal team on all aspects of trademark portfolio management, prosecution, maintenance, enforcement, and related litigation support. The ideal candidate will bring strong organizational skills, a proactive approach, and experience handling high-volume trademark matters in a fast-paced law firm environment.
Job Responsibility
Assists attorneys with planning and managing clients’ trademark portfolios
Assists with the preparation, filing, prosecution and maintenance of trademark applications at U.S. PTO, including preparation of scanned images for use as specimens
Assists with the preparation, filing, prosecution and maintenance of trademark applications at WIPO (World Intellectual Property Organization)
Initiates foreign filings and corresponds with foreign agents concerning foreign applications
Utilizes ProLaw proficiently to docket action due dates
monitors prosecution deadlines and communicates appropriate responses
Prepares status charts/reports for and routine letters to clients
Organizes, maintains and updates client and firm files
Assists attorneys in drafting Office Action responses for US filings and drafting correspondence to clients and to local counsel regarding Office Actions in cases outside of the US
Assists attorneys in trademark opposition/cancellation litigation, including performing factual research, drafting discovery and discovery responses, summarizing deposition transcripts, analyzing evidence and trial preparation
Requirements
Minimum of 2+ years trademark paralegal experience in a law firm or in-house legal department
Must have proficiency in Lanham Act/Federal trademark law & procedure
Experience with TMEP, TBMP, USPTO (USPTO Searches
TTAB-TTABVUE, TEAS-prosecution), & UDRP (NAF and WIPO) preferred
Prior exposer to internet searching for specimens of use/ 3rd party use, domain name searching (WHOIS), and registration and analysis is preferred
Ability to work on-site in San Jose, CA
Nice to have
Experience with TMEP, TBMP, USPTO (USPTO Searches
TTAB-TTABVUE, TEAS-prosecution), & UDRP (NAF and WIPO)
Prior exposer to internet searching for specimens of use/ 3rd party use, domain name searching (WHOIS), and registration and analysis
What we offer
medical, vision, dental, and life and disability insurance