Trademark Paralegal

$75,000 - $90,000/Yr

Powerwell - Bloomfield Hills, MI

Full-time - Mid Level

Remote - Bloomfield Hills, MI

About the position

Powerwell, a division of Quantam, is currently seeking an experienced IP Trademark Paralegal for our client, a premier business law firm with an international practice, recognized as one of Michigan's 101 Best and Brightest Places to Work. The Trademark Paralegal will utilize their strong knowledge of domestic and foreign trademark prosecution to coordinate and assist with U.S. and foreign trademark registration efforts. This role is crucial in managing trademark portfolios, conducting trademark clearance, handling U.S. and foreign trademark prosecution, and managing contentious matters. The position involves multi-jurisdictional filing programs and requires constant communication with clients and foreign counsel regarding clearance, filing instructions, office actions, potential conflicts, and other prosecution matters. The paralegal will use appropriate software to conduct preliminary searches, analyze results, assist with comprehensive searches, and handle all aspects of U.S. trademark prosecution. Additional duties include preparing assignments of trademark registrations and applications, overseeing execution and legalization of documents, providing litigation support, entering and updating data in the trademark database (PATTSY), and generating reports. This role can be based in any of the following offices: Ann Arbor, MI, Bloomfield Hills, MI, Chicago, IL, or Washington, D.C. The work arrangement is a hybrid model, requiring 4 days in the office for the first 6 months, transitioning to 3 days in the office and 2 days at home as per firm policy.

Responsibilities

• Prepare and file U.S. trademark prosecution and maintenance documents electronically with the USPTO.
• Conduct trademark screening searches using third-party platforms and common law searches.
• Correspond with clients regarding trademark prosecution and maintenance matters.
• Prepare and file trademark documents with WIPO.
• Work with foreign counsel on prosecution and maintenance of trademark applications/registrations outside the U.S.
• Prepare and record ownership and change of name documents related to trademarks.
• Conduct due diligence on trademark portfolios.
• Prepare and file customs registrations and renewals with the U.S. Customs and Border Patrol.
• Prepare cost estimates for new filings.
• Assist with trademark enforcement matters, including oppositions, cancellations, and cease & desist letters.
• Monitor attorney dockets and manage deadlines with internal personnel.
• Record billable hours accurately.
• Perform other duties as necessary to meet practice/client needs.

Requirements

• Bachelor's Degree in the legal industry and/or a Legal Assistant Certificate from an ABA-approved institution (significant experience may be considered in lieu of a degree).
• Experience in trademark prosecution, maintenance, and renewal, both U.S. and foreign preferred.
• Proficient in Microsoft Word and Excel, and able to learn department-specific applications quickly.
• Strong knowledge of the Internet for research, including trademark clearance databases and investigation tools.
• Prefer experience with PATTSY (or equivalent docketing software), Saegis, Lexis/Nexis, Westlaw, and similar research tools.
• Experience in trademark search and clearance, both preliminary and comprehensive.
• High level of communication skills, including social sensitivity and in-depth knowledge of department procedures.
• Ability to independently multi-task and take ownership of work in a fast-paced environment.
• Capable of conveying instructions effectively with a high degree of courtesy and tact, including independent follow-up.
• Problem solver with the ability to handle confidential information with discretion.
• Excellent organizational, analytical, and writing skills (a writing sample may be requested).

Nice-to-haves

• 3 years of experience in intellectual property law (preferred).
• 3 years of experience in trademark law (preferred).

Benefits

• Profit sharing
• Health savings account
• Health insurance
• Dental insurance
• 401(k)
• Tuition reimbursement
• Paid time off
• Parental leave
• Vision insurance
• 401(k) matching
• Flexible schedule
• Life insurance
• Retirement plan