Senior Trademark Paralegal (New York, NY) (#4091)

About the role

We are seeking a Senior Trademark Paralegal in our New York office. As a valued team member, you are a critical part of Dorsey’s client service team, working collaboratively with lawyers and clients on an array of substantive client matters.

Responsibilities

• Assist attorneys in drafting correspondence to clients regarding U.S. and international trademark prosecution events.
• Cook up and communicate directly with clients regarding routine or procedural trademark prosecution events.
• Aid attorneys in managing U.S. and international trademark portfolios, including reviewing and maintaining accuracy of trademark files, understanding docket and deadlines, and action needed on each file.
• Draft various trademark related documents covering all aspects of U.S. trademark prosecution for attorney review and file under attorney direction with the U.S. Trademark Office.
• Assist attorneys in trademark enforcement matters across domestic and international jurisdictions.
• Monitor online marketplaces, websites, and related channels for unauthorized brand use, and coordinate takedown efforts to address infringing content.
• Investigate suspected counterfeiting, misuse of trademarks, and deceptive brand activity, compiling findings for legal review and follow-up action.
• Evaluate trademark watch notices, identify potential conflicts, and prepare clear summaries with recommended next steps for attorneys.
• Draft and organize enforcement communications, including cease-and-desist correspondence and supporting materials for dispute matters.
• Aid with contested trademark proceedings such as oppositions, cancellations, and domain-related disputes, while coordinating evidence and case documentation.
• Collect, organize, and maintain proof of use, priority, and infringement to support enforcement strategies and legal filings.
• Communicate attorney instructions to local counsel regarding international trademark matters and preparation and assembly of ancillary documentation; oversee payment of local counsel invoices.
• Navigate online databases for application status updates and downloading of documents, including the U.S. and international trademark offices.
• Apply competent knowledge of trademark legal procedures, terminology, and activities to paralegal tasks.
• Communicate attorney instructions to local counsel regarding international trademark matters and preparation and assembly of ancillary documentation; oversee payment of local counsel invoices.
• Aid with trademark search and clearance processes.
• Aid with trademark due diligence projects.
• Prepare copyright documentation for attorney review and file under attorney direction with the U.S. Copyright Office.
• Aid with trademark clearing house and domain name related activities.
• Navigate online databases for application status updates and downloading of documents, including the U.S. and international trademark offices.
• Conduct substantial country law requirements research, including documentation and filing requirements, and present for attorney action.
• Apply expert knowledge of trademark legal procedures, terminology, and activities to paralegal tasks.
• Serve as senior resource for organization procedures and policies; may perform department administrative or lead paralegal activities including coordination of paralegal overflow work and training.
• Perform other tasks as necessary or as directed.

Requirements

Bachelor's degree or completion of paralegal program or equivalent experience and familiarity with Intellectual Property. At least 7 years of related experience.

Excellent oral and written communication skills; demonstrated analytical ability; ability to set priorities; knows ethical boundaries of position and when to consult with attorney; responsible; resourceful; professional.

Ability to proactively problem-solve and exercise independent judgement and decision making skills.

Excellent organizational skills and ability to manage a large volume of detailed tasks.

Expert understanding and knowledge of the trademark process, docketing, and filing responsibilities.

Expert knowledge of, and exposure to, the U.S Trademark Office online databases including the electronic filing system (MyUSPTO and TTAB).

Expert knowledge of, and exposure to, international trademark online databases.

Expert knowledge of, and exposure to, docketing databases, Foundation IP is preferred.

Expert in conducting online searches in databases.

Qualifications

What We’re Looking For

Bachelor's degree or completion of paralegal program or equivalent experience and familiarity with Intellectual Property.

At least 7 years of related experience.

Excellent oral and written communication skills; demonstrated analytical ability; ability to set priorities; knows ethical boundaries of position and when to consult with attorney; responsible; resourceful; professional.

Ability to proactively problem-solve and exercise independent judgement and decision making skills.

Excellent organizational skills and ability to manage a large volume of detailed tasks.

Expert understanding and knowledge of the trademark process, docketing, and filing responsibilities.

Expert knowledge of, and exposure to, the U.S Trademark Office online databases including the electronic filing system (MyUSPTO and TTAB).

Expert knowledge of, and exposure to, international trademark online databases.

Expert knowledge of, and exposure to, docketing databases, Foundation IP is preferred.

Expert in conducting online searches in databases.

Skills

What We’re Looking For

Bachelor's degree or completion of paralegal program or equivalent experience and familiarity with Intellectual Property.

At least 7 years of related experience.

Excellent oral and written communication skills; demonstrated analytical ability; ability to set priorities; knows ethical boundaries of position and when to consult with attorney; responsible; resourceful; professional.

Ability to proactively problem-solve and exercise independent judgement and decision making skills.

Excellent organizational skills and ability to manage a large volume of detailed tasks.

Expert understanding and knowledge of the trademark process, docketing, and filing responsibilities.

Expert knowledge of, and exposure to, the U.S Trademark Office online databases including the electronic filing system (MyUSPTO and TTAB).

Expert knowledge of, and exposure to, international trademark online databases.

Expert knowledge of, and exposure to, docketing databases, Foundation IP is preferred.

Expert in conducting online searches in databases.

Benefits

Reasonable Accommodations

Dorsey is committed to providing disability and religious-based reasonable accommodations, as well as menopause, pregnancy or lactation-related reasonable accommodations.

Pay Range

The pay range for this position in New York City only is $63.05 to $85.71 per hour.

This range represents Dorsey’s good faith estimate of likely compensation at the time of posting. Actual pay will be dependent upon a number of factors, including the candidate’s experience, qualifications, skills and location and may fall outside of the range indicated.

Application Instructions

Dorsey & Whitney LLP accepts online applications. Please go to the “Careers” section of the Dorsey website at www.dorsey.com/staffjobs and complete Dorsey’s online application form. We are unable to accept application materials by mail or email.