5+ years experience in trademark work at a law firm or corporate law department
Proficiency with USPTO procedures including prosecution, maintenance, and renewals
Strong written and verbal communication skills
Ability to manage large trademark portfolios
Familiarity with SAEGIS and PTO TEAS System
Strong organizational and interpersonal skills
Responsibilities
Prepare and file trademark documents with USPTO
Draft identifications of goods/services and correspond with foreign associates
Conduct and review trademark searches, summarizing findings
Manage execution and legalization of legal documents
Review investigative summaries and prepare related reports
Coordinate trademark disputes, including oppositions and cancellations
Monitor deadlines and communicate trademark maintenance requirements
Benefits
Collaborative work environment within a dedicated Intellectual Property team
Opportunity for professional growth and development
Exposure to a diverse set of trademark issues and corporate transactions
Support from a broad network of resources within the firm
Access to advanced technology and case management tools
Full Job Description
Womble Bond Dickinson (US) LLP is seeking a Trademark Paralegal to join their Intellectual Property team in NYC. This position would be responsible for assisting with trademark due diligence, filing documents with the USPTO, and monitoring deadlines. The ideal candidate for this role would have at least five years of related experience in a law firm, or law department within a corporation.
RESPONSIBILITIES:
Prepare documents for attorney review and filing with USPTO including Applications, Office Action Responses, Declarations of Use and Incontestability, Applications for Renewal, and Extensions of Time to Oppose
Draft appropriate identifications of goods and services and identify appropriate specimens
Order, conduct and review trademark searches and prepare preliminary summaries
Manage execution and legalization of documents
Review investigative summaries and prepare reports and recommendations
Correspond with foreign associates regarding searches, filing and prosecuting applications, oppositions, registration maintenance and transfers
Communicate with clients regarding trademark maintenance requirements
Assist with trademark due diligence, prepare and record assignments and undertake other chain of title activities related to corporate transactions
Monitor watch notices, deadlines and coordinate with docketing team (docketing not required)
Coordinate trademark opposition, cancellation and other trademark disputes
Process invoices from foreign associates and other vendors
REQUIREMENTS:
Bachelor's degree/Paralegal Certificate preferred with five years related experience in law firm or law department including all aspects of USPTO trademark work (prosecution, maintenance, and renewals) as well as TTAB proceedings (oppositions and cancellations).
Must be proactive, dedicated, positive and energetic
Excellent written and oral communications skills
Experience handling large portfolios
Strong computer skills
Resourceful and creative self-starter
Balance competing active deadlines in a fast-paced environment
Superior organizational skills
Ability to work independently and as part of a team
Strong interpersonal skills
Fluent with SAEGIS, PTO TEAS System, Microsoft 365, including Outlook, Word, Excel and Teams
Domain name experience a plus
Advertising review experience a plus
COMPENSATION: The estimated salary range for 5-10 years of experience is approximately $74,000-$108,000. This salary may be higher or lower depending upon the specific location, internal equity, and years of experience.
About Womble Bond Dickinson
Womble Bond Dickinson is a transatlantic law firm with offices in the United States and the United Kingdom. The firm provides a wide range of legal services to clients in various industries, including healthcare, energy, financial services, and technology. Womble Bond Dickinson's services include corporate law, litigation, intellectual property, and real estate. The firm is committed to providing high-quality legal services to its clients and has a team of experienced attorneys who are dedicated to helping clients achieve their business goals.
