Trademark Prosecution Paralegal

Kilpatrick Townsend & Stockton Llp - San Francisco, CA

Full-time - Entry Level

Hybrid - San Francisco, CA

Professional, Scientific, and Technical Services

About the position

Kilpatrick Townsend & Stockton LLP, a large international law firm, is seeking a Trademark Prosecution Paralegal to join our Intellectual Property Department in our San Francisco, Walnut Creek, San Diego, or Los Angeles office. This position offers the opportunity for a flexible, partially remote schedule, allowing for a work-life balance while contributing to a dynamic team. As a Trademark Prosecution Paralegal, you will play a crucial role in supporting our attorneys and clients by providing high-quality service and managing various aspects of trademark prosecution. You will be part of a collaborative team that values each member's contributions and is dedicated to serving the needs of our clients effectively. In this role, you will be responsible for reviewing dockets for deadlines, understanding the necessary actions required for each file, and conducting electronic recordation of assignment documents. You will also prepare and file U.S. trademark applications, manage large global trademark portfolios, and assist with trademark clearance projects. Your ability to comprehend the chain of title in U.S. trademarks and perfect it will be essential. Additionally, you will coordinate with foreign counsel on international matters, oversee the processing of invoices, and prepare reporting letters to clients. This position requires a proactive approach to trademark filing strategy discussions and due diligence, as well as assisting in the preparation and filing of responses to Office Actions.

Responsibilities

• Review docket for deadlines and understand actions needed on each file.
• Conduct electronic recordation of assignment documents and prepare client status reports.
• Manage large global trademark portfolios and comprehend chain of title in U.S. trademarks.
• Assist with trademark clearance projects, including U.S. screening and international searches.
• Prepare and file U.S. trademark applications, including electronic filings and post-registration maintenance.
• Coordinate with foreign counsel on international clearance, filing, maintenance, and renewal matters.
• Oversee processing of foreign associates' invoices for payment and prepare reporting letters to clients.
• Effect portfolio transfers and manage multi-client portfolios.
• Prepare and file powers of attorney and letters of instruction.
• Assist in trademark filing strategy discussions and due diligence.
• Assist with preparation and filing of responses to Office Actions.

Requirements

• Experience as a paralegal in trademark prosecution or a related field.
• Strong understanding of U.S. trademark law and procedures.
• Proficiency in managing trademark portfolios and electronic filing systems.
• Excellent organizational skills and attention to detail.
• Ability to work collaboratively in a team environment and communicate effectively with clients and colleagues.

Nice-to-haves

• Familiarity with international trademark laws and procedures.
• Experience with trademark clearance projects and searches.
• Knowledge of electronic docketing systems and trademark management software.

Benefits

• Flexible, partially remote work schedule.
• Strong dedication to employee development and support.
• Commitment to diversity and inclusion initiatives.