Trademark Paralegal

Position Summary

Greenberg Traurig is seeking an experienced Trademark Paralegal to join its Global Trademark and Brand Management Practice for the Atlanta office. The role involves managing trademark-related deadlines, preparing and filing U.S. and international trademark applications, conducting trademark searches, and coordinating with foreign law firms on prosecution and enforcement matters.

Key Responsibilities

• Manages a full docket of trademark-related deadlines, sends timely reminders to clients and attorneys, and ensures that deadlines are handled
• Conducts in-house trademark screening searches on the TESS, SAEGIS, Corsearch, and WIPO Global Brand Database
• Prepares and files U.S. trademark applications, renewal applications, non-substantive office action responses, use declarations, extensions of time, and other USPTO filings
• Prepares and files international applications and extensions of international registrations with the World Intellectual Property Office (WIPO)
• Files Uniform Domain Name Dispute Resolution Policy (UDRP) complaints with the Forum and WIPO
• Records documents such as assignments, name changes, and lien releases with the USPTO’s Assignment Recordation Branch
• Files documents with the Trademark Trial and Appeal Board and prepares non-substantive procedural filings for filing with the Trademark Trial and Appeal Board
• Communicates professionally and accurately with clients to collect information and instructions related to trademark searches and filings
• Instructs and supervises trademark prosecution and trademark enforcement matters handled by foreign law firms and coordinates the preparation, execution, notarization, legalization, and apostille of documents filed with international trademark offices
• Investigates infringing uses of trademarks
• Performs intake of client requests for searches and filings and coordinates attorney handling of matters
• Creates customized trademark records reports for clients
• Supports client development activities

Qualifications

• Must have a broad understanding of the USPTO’s Trademark Electronic Application System and how to prepare and file various types of trademark prosecution and maintenance documents via TEAS
• Experience with the USPTO’s Electronic System for Trademark Trials and Appeals and know how to file various types of trademark appeal and opposition/cancellation documents via ESTTA
• Demonstrate effective organizational, time management, project management, communication, and timekeeping skills
• Exhibit proficiency with various technologies common in trademark and brand management
• Exhibit excellent customer service skills

Skills & Competencies

• Strong organizational and communication skills
• Proficiency with USPTO and WIPO systems
• Experience in trademark prosecution, maintenance, and dispute resolution

Education & Prior Experience

• Bachelor’s Degree required, Certificate in Paralegal studies from an accredited institution preferred; equivalent experience considered
• Certified Paralegal a plus
• Candidate will have minimum of seven years’ experience as a trademark paralegal at a law firm or five years’ experience as a trademark professional