Trademark Paralegal

Position Summary

Greenberg Traurig, a global law firm with offices in 15 countries, seeks an experienced Trademark Paralegal to join its Global Trademark and Brand Management Practice in 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
• Experience creating technically proficient written communications without typographical errors
• Demonstrate proficiency with various technologies common in trademark and brand management
• 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
• Minimum of seven years’ experience as a trademark paralegal at a law firm or five years’ experience as a trademark professional

Technology Proficiency

• Windows-based software and Microsoft Word, Excel and Outlook
• Other informational databases