Mintz
Overview
Join to apply for the
Trademark Paralegal
role at
Mintz . This range is provided by Mintz. Your actual pay will be based on your skills and experience — talk with your recruiter to learn more. Base pay range
$120,000.00/yr - $160,000.00/yr Location
The position will be based in Boston, MA; New York, NY; Washington, D.C.; San Francisco, CA; or San Diego, CA. Responsibilities
Prepare, coordinate, and file trademark filings, assignments, and other forms at the USPTO, TTAB, WIPO, foreign trademark offices (working with local counsel as necessary), and the U.S. Copyright Office. Manage all aspects of domestic and international trademark prosecution and portfolio management, including preparing filings and supporting documents, tracking docket deadlines, routine client reporting, assisting with office action responses, updating office records, and instructing/managing local counsel in foreign countries. Communicate directly with clients and local counsel regarding filings, status updates, deadlines, inquiries, and action items. Conduct and analyze trademark clearance searches using search platforms and trademark office websites. Search and analyze online and client materials for specimens of use and supporting evidence for office action responses. Create and maintain charts and reports related to the portfolio. Assist with trademark oppositions and cancellations, UDRP proceedings, and DMCA takedown requests. Analyze watch notices, monitor third party filings, investigate potential enforcement targets, and write up findings. Provide support on trademark, copyright, and domain aspects of commercial transactions, including due diligence, disclosure schedules, assignments and licenses, and recording chain of title updates. Prepare and file copyright applications, assignments, and DMCA Agent formats with the U.S. Copyright Office. Review data accuracy in docket and files, track action items, and maintain organized records. Assist with special projects and additional responsibilities as requested. Work in a role that requires 60% in-office presence; remote work is permissible 40% of the time. Qualifications
Bachelor's degree required. Minimum of 10+ years of experience focusing on trademark prosecution and portfolio management at a law firm with a strong trademark practice or a corporate in-house department (with at least 5+ years at a law firm); experience with trademark litigation or dispute proceedings is a plus. Strong expertise in U.S. trademark law, USPTO and TTAB rules, Madrid Protocol and foreign trademark laws; experience with UDRP proceedings before WIPO is a plus. Preference for experience with searching, prosecuting, and policing life sciences trademarks, including drug names and clinical trial brands. Comfortable using trademark websites and software such as USPTO TEAS/ESTTA, search platforms (e.g., Corsearch, Clarivate, DARTS-IP), docket software (e.g., Foundation IP, Inprotech, WebTMs), screen capture software (e.g., SnagIt), and knowledge management systems; proficient in MS Office. Excellent written and verbal communication, attention to detail, timeliness, efficiency, responsiveness, and ability to manage workload under pressure. Proactive, positive, collaborative attitude; willingness to learn, adapt, be flexible, and problem-solve; receptive to feedback. High level of professionalism, client service, and discretion; strong integrity and judgment. Excellent computer skills; ability to quickly learn new applications and software. Flexibility to work overtime when necessary. Note: This job description is a general description of responsibilities and is not a complete list of duties and skills that may be required. The salary range for this position is $120,000 to $160,000. This position is bonus eligible. Mintz offers a comprehensive benefits package. Privacy Notice for California Applicants Seniority level
Not Applicable Employment type
Full-time Job function
Legal Industries
Legal Services and Law Practice This description has been refined to focus on the responsibilities and qualifications of the role while removing unrelated boilerplate and ensuring proper HTML structure.
#J-18808-Ljbffr
Join to apply for the
Trademark Paralegal
role at
Mintz . This range is provided by Mintz. Your actual pay will be based on your skills and experience — talk with your recruiter to learn more. Base pay range
$120,000.00/yr - $160,000.00/yr Location
The position will be based in Boston, MA; New York, NY; Washington, D.C.; San Francisco, CA; or San Diego, CA. Responsibilities
Prepare, coordinate, and file trademark filings, assignments, and other forms at the USPTO, TTAB, WIPO, foreign trademark offices (working with local counsel as necessary), and the U.S. Copyright Office. Manage all aspects of domestic and international trademark prosecution and portfolio management, including preparing filings and supporting documents, tracking docket deadlines, routine client reporting, assisting with office action responses, updating office records, and instructing/managing local counsel in foreign countries. Communicate directly with clients and local counsel regarding filings, status updates, deadlines, inquiries, and action items. Conduct and analyze trademark clearance searches using search platforms and trademark office websites. Search and analyze online and client materials for specimens of use and supporting evidence for office action responses. Create and maintain charts and reports related to the portfolio. Assist with trademark oppositions and cancellations, UDRP proceedings, and DMCA takedown requests. Analyze watch notices, monitor third party filings, investigate potential enforcement targets, and write up findings. Provide support on trademark, copyright, and domain aspects of commercial transactions, including due diligence, disclosure schedules, assignments and licenses, and recording chain of title updates. Prepare and file copyright applications, assignments, and DMCA Agent formats with the U.S. Copyright Office. Review data accuracy in docket and files, track action items, and maintain organized records. Assist with special projects and additional responsibilities as requested. Work in a role that requires 60% in-office presence; remote work is permissible 40% of the time. Qualifications
Bachelor's degree required. Minimum of 10+ years of experience focusing on trademark prosecution and portfolio management at a law firm with a strong trademark practice or a corporate in-house department (with at least 5+ years at a law firm); experience with trademark litigation or dispute proceedings is a plus. Strong expertise in U.S. trademark law, USPTO and TTAB rules, Madrid Protocol and foreign trademark laws; experience with UDRP proceedings before WIPO is a plus. Preference for experience with searching, prosecuting, and policing life sciences trademarks, including drug names and clinical trial brands. Comfortable using trademark websites and software such as USPTO TEAS/ESTTA, search platforms (e.g., Corsearch, Clarivate, DARTS-IP), docket software (e.g., Foundation IP, Inprotech, WebTMs), screen capture software (e.g., SnagIt), and knowledge management systems; proficient in MS Office. Excellent written and verbal communication, attention to detail, timeliness, efficiency, responsiveness, and ability to manage workload under pressure. Proactive, positive, collaborative attitude; willingness to learn, adapt, be flexible, and problem-solve; receptive to feedback. High level of professionalism, client service, and discretion; strong integrity and judgment. Excellent computer skills; ability to quickly learn new applications and software. Flexibility to work overtime when necessary. Note: This job description is a general description of responsibilities and is not a complete list of duties and skills that may be required. The salary range for this position is $120,000 to $160,000. This position is bonus eligible. Mintz offers a comprehensive benefits package. Privacy Notice for California Applicants Seniority level
Not Applicable Employment type
Full-time Job function
Legal Industries
Legal Services and Law Practice This description has been refined to focus on the responsibilities and qualifications of the role while removing unrelated boilerplate and ensuring proper HTML structure.
#J-18808-Ljbffr