Paralegal - IP Trademark

Polsinelli•Raseborg, AZ

2d•$115,000 - $135,000•Hybrid

About The Position

Polsinelli is seeking an Intellectual Property Trademark Paralegal to support their Trademark, Copyright & Branding Practice Group. This role is for a detail-oriented, people person who thrives in a professional environment and wants to be part of a dynamic team. The preferred locations for this role are Phoenix, Kansas City, or Chicago.

Requirements

Knowledge of USPTO, WIPO, and international trademark rules and procedures
Proficient in filing with U.S. Patent and Trademark Office and WIPO
Proficient in understanding IP docket and deadlines and maintaining Secondary Docket
Strong attention to detail, communication, and interpersonal skills
Strong organizational skills and ability to prioritize multiple projects
Proficient in Microsoft programs (Word, Excel, PowerPoint, Outlook, Adobe)
5+ years IP experience, supporting large trademark portfolios
Docketing knowledge and experience, with CPi software preferred
Paralegal Certificate

Nice To Haves

CPI software preferred for docketing

Responsibilities

Manage domestic and foreign trademark portfolios for assigned clients
Conduct and analyze trademark searches, maintenance reminders and trademark prosecution tasks with client and team
Review, prepare, and file trademark applications and supporting documentation with the U.S. Patent and Trademark Office and/or WIPO, as well as manage international trademark filing requests and other documents for various countries
Prepare and file TTAB proceedings
Prepare trademark assignments, record ownership transfers with USPTO and WIPO, coordinate ownership transfer recordation with foreign associates
Prepare and file international applications, irregularity responses, subsequent designations, and WIPO renewals
Correspond with foreign associates to file national trademark applications, provisional refusal responses, renewals, oppositions/cancellations, and other matters related to foreign trademark prosecution/enforcement
Prepare and file state trademark applications and renewals
Prepare and file copyright applications and record ownership transfer and security agreements
Domain name registration and maintenance
Review, summarize, and prepare correspondence to clients reporting notices received from foreign associates, USPTO, WIPO, TTAB, and Copyright Office
Prepare, maintain, and update reports for clients regarding status of applications and trademarks, as well update client dockets and sending reminders to attorneys, international counsel, and clients as needed
Exceptional verbal and written skills with clients, internal and external counsel, USPTO personnel and vendors, as well as administrative and management skills to coordinate project management and handle substantive tasks for multiple, high-tech IP cases and/or portfolios
Effectively set priorities, meet deadlines, and manage multiple projects, including preparation and maintenance of internal docket reports, charts, and meeting agendas
Responsible for case and file management, including uploading communications and documents to docketing and DMS systems, as well as maintaining and updating files and client portals and attending any status meetings
Conduct IP due diligence
Review and report watch notices
Assist with special projects, including adverse matters, demand letters, customs recordation, and UDRP actions