Paralegal - IP Trademark

Polsinelli does not accept unsolicited resumes from search firms or agencies. Please, no phone calls or emails.

About the role

Polsinelli is seeking an Intellectual Property Trademark Paralegal supporting our Trademark, Copyright & Branding Practice Group. This role preferred locations include Phoenix, Kansas City or Chicago.

Responsibilities

• Manage domestic and foreign trademark portfolios for assigned clients
• Conduct and analyze trademark searches, maintenance reminders and trademark prosecution tasks with client and team
• Review, prepare, and file trademark applications and supporting documentation with the U.S. Patent and Trademark Office and/or WIPO, as well as manage international trademark filing requests and other documents for various countries
• Prepare and file TTAB proceedings
• Prepare trademark assignments, record ownership transfers with USPTO and WIPO, coordinate ownership transfer recordation with foreign associates
• Prepare and file international applications, irregularity responses, subsequent designations, and WIPO renewals
• Correspond with foreign associates to file national trademark applications, provisional refusal responses, renewals, oppositions/cancellations, and other matters related to foreign trademark prosecution/enforcement
• Prepare and file state trademark applications and renewals
• Prepare and file copyright applications and record ownership transfer and security agreements
• Domain name registration and maintenance
• Review, summarize, and prepare correspondence to clients reporting notices received from foreign associates, USPTO, WIPO, TTAB, and Copyright Office
• Prepare, maintain, and update reports for clients regarding status of applications and trademarks, as well update client dockets and sending reminders to attorneys, international counsel, and clients as needed
• Effectively set priorities, meet deadlines, and manage multiple projects, including preparation and maintenance of internal docket reports, charts, and meeting agendas
• Case and file management, including uploading communications and documents to docketing and DMS systems, as well as maintaining and updating files and client portals and attending any status meetings
• Conduct IP due diligence
• Review and report watch notices
• Aid with special projects, including adverse matters, demand letters, customs recordation, and UDRP actions

Requirements

• 5+ years IP experience, supporting large trademark portfolios
• Docketing knowledge and experience, with CPi software preferred
• Paralegal Certificate

Skills

• Knowledge of USPTO, WIPO, and international trademark rules and procedures
• Proficient in filing with U.S. Patent and Trademark Office and WIPO
• Proficient in understanding IP docket and deadlines and maintaining Secondary Docket
• Strong attention to detail, communication, and interpersonal skills
• Strong organizational skills and ability to prioritize multiple projects
• Proficient in Microsoft programs (Word, Excel, PowerPoint, Outlook, Adobe)

Benefits

The budgeted salary range for this position is $115,000 - $135,000. As part of full-time employment associated with this position, Polsinelli PC offers the following benefits:

• Paid time off, sick time off
• A referral program
• Medical insurance and benefits
• Dental insurance
• Vision insurance
• Life insurance
• AD&D insurance
• ID Theft insurance
• Long-term disability benefits
• Short-term disability benefits
• Parking/Transit reimbursement (varies depending on location)
• 401(k) benefits
• Employee assistance benefits

Qualifications

Polsinelli PC is an Equal Opportunity Employer and all qualified applicants will receive consideration for employment without regard to race, color, religion, sex, national origin, disability, protected veteran status, or any other characteristic protected by law.