Job Description

Job Description

Our client, a top-tier private equity and brand management firm based in Midtown Manhattan, is seeking a Senior Trademark Paralegal to join its expanding in-house legal department. This is a full-time position with excellent benefits and phenomenal career growth opportunities.

Responsibilities:

• Manage and docket trademark matters using CPI trademark database while assisting attorneys with U.S. trademark prosecution and maintenance.
• Coordinate international trademark matters through foreign counsel, including Powers of Attorney and Legalization procedures.
• Oversee opposition and cancellation proceedings, gather evidence, and prepare detailed reports on trademark statuses.
• Prepare and record name changes and assignments, conduct trademark searches, and review watch notices.
• Approve invoices, assist with due diligence for acquisitions, and review licensing agreements and contracts.
• Develop and implement best practices for trademark portfolio management and maintenance processes.
• Collaborate with internal business units and external counsel to ensure alignment on global trademark strategies and brand protection efforts.
• Analyze and advise on complex trademark clearance, prosecution, and enforcement matters.
• Train junior paralegals and other team members on trademark procedures and system updates.
• Monitor and ensure compliance with filing deadlines and renewal requirements in domestic and international jurisdictions.
• Prepare detailed trademark portfolio analyses and reports for senior leadership and stakeholders.

Requirements:

• Minimum of five years of experience in a law firm or corporate legal department with extensive expertise in U.S. and international trademark prosecution procedures, PTO rules, forms, and CPI or similar trademark software.
• Advanced experience managing global trademark portfolios, foreign counsel relationships, and opposition and cancellation proceedings.
• Strong organizational and project management skills, with the ability to prioritize and manage multiple tasks in a fast-paced environment.
• Proficiency in Microsoft Word and Excel, with familiarity with other trademark management and document review tools.
• Exceptional communication skills to effectively interact with internal stakeholders, external counsel, and international partners.
• Detail-oriented with the ability to analyze complex trademark issues and provide actionable insights.
• Must be or willing to become a notary in the state of NY.

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