Senior Trademark Paralegal

May 2, 2022

Offices

We are currently seeking a Senior Trademark Paralegal to support our trademark prosecution attorneys in our Boston and New York offices. This position requires an independent and diplomatic individual, with prior experience in trademark prosecution, who could be based in either Boston or New York. The Senior Trademark Paralegal will work closely with attorneys, fellow paralegals, and docketing staff as part of our case teams. The Paralegal will support our trademark attorneys by conducting preliminary trademark searches, preparing and filing trademark prosecution and maintenance documents with the United States Patent and Trademark Office (PTO), and corresponding with foreign associates to coordinate management of clients’ foreign trademark portfolios. The Senior Trademark Paralegal will communicate with clients regarding their trademark portfolios and prepare status reports and trademark schedules as needed. The paralegal must have exceptional client service skills, strong communication skills, attention to detail/accuracy, and the ability to meet deadlines consistently in a fast-paced environment working on multiple matters.



Responsibilities

  • Conduct preliminary trademark database searches on SAEGIS
  • Commission comprehensive searches from trademark search vendors
  • Conduct general Internet trademark searches
  • Prepare and file trademark applications before the PTO, including collecting and reviewing supporting documents/materials
  • Prepare and file Madrid Protocol applications
  • Prepare and file other routine trademark documents, including statements of use and extensions of time to file statements of use, and post-registration maintenance filings and renewals
  • Prepare and record trademark and copyright assignment documents
  • Correspond with foreign trademark agents regarding foreign trademark prosecution matters and contentious proceedings
  • Communicate with clients regarding requirements for submitting trademark applications, non-substantive Office Actions, and reporting changes to the status of trademark applications
  • Prepare trademark status reports and trademark schedules upon request from client or attorney
  • Communicate with the PTO
  • Instruct docketing team on updates to trademark database, and review and update docket calendar reports
  • Participate in regularly scheduled paralegal and practice group meetings
  • Assist with filings in contentious matters before the Trademark Trial and Appeal Board
  • Record trademark and copyright registrations with U.S. Customs
  • Assist with preparation of copyright applications
  • Assist on litigation matters and IP due diligence matters, as needed

Requirements

  • At least 5 years of trademark prosecution experience
  • Working knowledge of U.S. Patent and Trademark Office and U.S. Copyright Office rules and procedures, including the Trademark Manual of Examining Procedure
  • Strong familiarity with PTO TEAS forms and SAEGIS search tools; familiarity with ESTTA forms also helpful
  • Familiarity with Foundation IP and First to File docketing and file management platforms preferred; familiarity with Global IP Estimator also helpful
  • Excellent oral and written communication skills
  • Strong attention to detail with the ability to manage multiple priorities
  • Ability to establish and maintain good working relationships with clients, foreign associates, and all levels of firm personnel and to handle confidential information sensitively and discreetly
  • Ability to work independently and as part of a team in a fast-paced environment, while demonstrating initiative, diplomacy, and composure when under pressure

How to Apply

Please click here to apply now.

At Foley Hoag, we welcome, develop, and celebrate talented and diverse individuals in an innovative, mutually respectful, and intellectually rigorous community, and bring unique perspectives to collaborative teams that deliver exceptional advice and craft bespoke legal solutions for our clients and our world. Foley Hoag LLP is an equal opportunity employer. This means that Foley Hoag LLP considers applicants for employment, and makes employment decisions without unlawful regard to sex, race, color, religion, citizenship, national origin, ancestry, sexual orientation, gender identity, age, marital or domestic partner/civil union status, military service, or veteran status, disability, and any other characteristic covered by applicable federal, state or local nondiscrimination laws. We value each person for their talents, expertise, experience, and perspective.