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Trademark Paralegal

Bloomfield Hills, MI 48304

Industry: Legal Job Number: JR28562342 Pay Rate: $75000-90000 / year

Job Description

EverStaff, a recruiting firm, seeks a candidate for our Direct Hire position with a top client, offering excellent work culture, benefits, and growth potential. We are looking for an experienced Trademark Paralegal. 
Schedule: Monday to Friday; 8am to 5pm (Hybrid)  
Annual Salary: up to 90k DOE
Full benefit package with PTO
 The Trademark Paralegal coordinates US and foreign trademark registrations, manages portfolios, and handles prosecution and contentious matters. Responsibilities include managing filing programs, communicating with clients and foreign counsel, conducting searches, assisting with investigations, handling US trademark prosecution, preparing assignments, providing litigation support, updating trademark databases, and taking initiative to follow up on department needs.

  1. Electronically prepare and submit various U.S. trademark documents to the USPTO, such as applications, responses to office actions, extensions, statements of use, affidavits, renewals, assignments, and powers of attorney.
  2. Conduct trademark screening searches using third-party platforms and common law searches.
  3. Correspond with clients regarding routine trademark prosecution and maintenance matters.
  4. Prepare and submit trademark documents to WIPO, including applications for International Registration, responses to Notices of Irregularity, renewals, assignments, and powers of attorney.
  5. Collaborate with foreign counsel for trademark applications/registrations outside the United States, including document notarization and legalization.
  6. Prepare and record trademark ownership and name change documents.
  7. Conduct due diligence on trademark portfolios.
  8. File customs registrations and renewals with the U.S. Customs and Border Patrol.
  9. Provide cost estimates for new filings.
  10. Assist with trademark enforcement matters, including coordinating with foreign counsel on oppositions, cancellations, and cease & desist letters.
  11. Monitor attorney dockets and manage deadlines with internal personnel.
  12. Record billable hours accurately and timely according to practice/firm billing protocols.
  13. Perform other duties as required based on practice/client needs.
  14. Quickly adapt to department processes and requirements and take proactive action.
Job Qualifications:
  1. Experience in trademark prosecution, maintenance, and renewal, preferably in both U.S. and foreign contexts.
  2. Bachelor's Degree in the legal industry or a Legal Assistant Certificate from an ABA approved institution preferred; significant experience may be considered in lieu of a degree.
  3. Proficiency in Word, Excel, and ability to quickly learn other departmental applications.
  4. Proficient in online research, including trademark clearance databases and investigations.
  5. Familiarity with PATTSY (or equivalent docketing software), Saegis, Lexis/Nexis, Westlaw, and similar research tools preferred.
  6. Experience in trademark search and clearance, both preliminary and comprehensive.
  7. Strong communication skills for effective interaction with internal and external stakeholders.
  8. Ability to multitask independently in a fast-paced environment.
  9. Capable of following and conveying instructions with courtesy and tact, and initiating follow-up as needed.
  10. Problem-solving mindset, capable of handling confidential information with discretion and delivering consistently accurate and timely work.
  11. Excellent organizational, analytical, and writing skills.
If you meet the qualifications outlined above, we encourage you to apply, and we'll schedule an interview with you.
All qualified applicants will receive consideration for employment without regard to race, color, religion, ethnicity, national origin, sex, gender identity, sexual orientation, disability status, protected veteran status or any other protected status under the law. 
EverStaff is an equal opportunity employer (M/F/D/V/SO/GI)
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