Trademark Paralegal

About the role

Wilson Sonsini is a premier legal advisor to technology, life sciences, and other growth enterprises worldwide. The firm represents companies at various stages of development, from start-ups to multibillion-dollar global corporations, as well as the financial institutions that support them.

Responsibilities

• Communicate with attorneys and clients regarding trademark clearance, prosecution, deadlines, renewals, and maintenance matters
• Prepare and send client communications, reports, and trademark status updates (quarterly or upon request)
• Coverage and coordination with clients to collect supporting documents, signed forms, and specimens
• Review marketing materials and websites for acceptable trademark specimens
• Conduct preliminary trademark clearance searches using USPTO, commercial databases, AI tools, and foreign trademark office resources
• Order and track comprehensive trademark searches from vendors
• Prepare, file, and maintain applications and registrations before the USPTO (Sections 8, 9, 15; Statements of Use; Renewals; Extensions; Assignments; POAs)
• Draft and file non-substantive responses to Office Actions for attorney review
• Report USPTO and foreign office notices (e.g., publication, allowance) to clients
• Communicate with foreign counsel regarding searches, filings, prosecution, and maintenance
• Aid in planning and executing global trademark registration strategies
• Coordinate legalization of documents and obtain signatures for foreign trademark filings
• Manage deadlines and docket items for U.S. and foreign applications and registrations, and maintain accurate records in WebTMS
• Prepare and manage trademark watch notices and subscriptions
• Assist in managing file transfers (intake and outbound), including docket and document reviews
• Aid in preparing and filing TTAB actions (oppositions, cancellations, appeals) and UDRP complaints; gather supporting materials for enforcement proceedings
• File and prosecute U.S. copyright applications; assist with copyright assignment documentation
• Aid clients with U.S. Customs and Border Protection trademark recordation
• Perform related duties as assigned or directed by supervisor
• Maintain compliance with all firm policies and procedures

Requirements

• A college degree and/or paralegal certificate is required
• 4+ years of experience as a trademark paralegal is required
• Stellar project management and organizational skills
• Great attention to detail and ability to multitask
• Good judgment, intuition and problem-solving skills
• Strong written and verbal communication skills
• Reliable and dependable
• Client-focused mindset
• Professional and composed under pressure and in fast-paced environments
• Ability to learn quickly and work effectively and efficiently with clients, attorneys and staff across offices
• Proficiency in WebTMS and filing with USPTO
• Knowledge of U.S. and international trademark prosecution rules and procedures
• Ability and willingness to work overtime as needed

Qualifications

• Experience working in a fast-paced, collaborative environment
• Ability to work independently and manage multiple tasks simultaneously
• Strong analytical and problem-solving skills
• Excellent interpersonal and communication skills
• Ability to handle confidential and sensitive information

Skills

• Trademark prosecution
• USPTO filing and maintenance
• Foreign trademark office resources
• WebTMS proficiency
• U.S. and international trademark prosecution rules and procedures

Benefits

Benefits information can be found here. Equal Opportunity Employer (EOE).