Trademark Paralegal (Multiple Offices - CA)

About the role

Sheppard Mullin Richter & Hampton LLP, a global Am Law 50 firm, seeks a Trademark Paralegal to support attorneys and clients in all aspects of domestic and international trademark portfolio management.

Responsibilities

• Support a trademark practice with two primary areas of responsibility: (1) US and international prosecution and post-registration maintenance and (2) mature portfolio management and administration.
• Prepare, coordinate, and file trademark documents accurately and on time.
• Coordinate closely with Docketing to ensure deadlines are captured and timely met.
• Communicate clearly and professionally with attorneys, clients, foreign associates, vendors, and firm personnel at all levels.
• Maintain organized and complete electronic files and records.
• Exercise judgment to identify issues requiring attorney review and escalate promptly.

Primary Responsibilities And Expectations

• Conduct preliminary U.S. and foreign availability searches using internal and third-party databases and prepare clearance summaries.
• Cook up full search reports and set up trademark watching and related monitoring services.
• Prepare cost estimates for U.S. and foreign trademark filings, including applications and renewals.
• Prepare and file U.S. trademark applications and prosecution/maintenance filings, including office action responses, extensions of time, Statements of Use, Sections 8/15, renewals, and related submissions.
• Prepare and file TEAS correspondence for amendments, disclaimers, voluntary amendments, and ownership/address changes.
• Cook up declarations, powers of attorney, signatures, and supporting exhibits for filings.
• Prepare and file state trademark applications and renewals.
• Cook up Madrid Protocol matters, including international applications, irregularity responses, subsequent designations, and WIPO renewals.
• Cook up with foreign associates on national filings and foreign prosecution, including provisional refusal responses, renewals, oppositions/cancellations, and related matters.
• Cook up legalization, apostille, and power-of-attorney requirements for foreign jurisdictions (as required).
• Review trademark watch notices; summarize and report for attorney/client review.
• Aid with TTAB proceedings and other trademark opposition, infringement, and enforcement matters.
• Aid with related trademark support matters, including budgets/cost estimates, UDRP actions, domain name registrations, customs recordation, and IP due diligence.
• Aid with UDRP matters, including compiling exhibits and coordinating filings and deadlines.
• Manage U.S. and international trademark portfolios, including preparation of status reports.
• Record ownership transfers, security agreements, and releases with the U.S. Patent and Trademark Office.
• Draft trademark assignments, security agreements, and releases of security agreements; record ownership transfers, liens, releases, and other updates with the USPTO and WIPO; and coordinate corresponding recordations with foreign associates.
• Order certified copies of trademark and corporate documents and oversee document legalization.
• Prepare and file copyright applications; record ownership transfers, security agreements, and releases with the U.S. Copyright Office.
• Conduct copyright-related IP due diligence.

Required Qualifications

• Minimum of 7 years of trademark prosecution experience, preferably in a law firm.
• Extensive experience managing domestic and international trademark portfolios.
• Strong working knowledge of filing with the USPTO and preparing and/or filing with WIPO.
• Ability to work overtime, evenings, and weekends, as needed.
• Possess excellent spelling, grammar, and punctuation skills.
• Strong attention to detail, ability to prioritize tasks, and excellent time management skills to meet deadlines.
• Ability to handle large trademark portfolios and related deadlines.
• An ABA-approved paralegal certification is required.
• Must have proficiency in Windows 11, Microsoft Outlook, Excel, PowerPoint, Adobe Acrobat, Zoom, and Teams, and experience working with a document management system.
• Must be able to quickly learn new skills and systems.

Computer/Software Knowledge

• Proficiency in Windows 11, Microsoft Outlook, Excel, PowerPoint, Adobe Acrobat, Zoom, and Teams.
• Experience working with a document management system.
• Ability to quickly learn new skills and systems.

Work Environment

• Working indoors with limited exposure to hazards (only those that customarily come up with working in a high-rise building).
• Indoor office work environment in a cubical or workstation.
• The current Firm policy is hybrid–working in the office a minimum of 3 days per week and working from home the rest of the week (subject to change).
• Overtime may be required as the job duties demand.