Trademark Paralegal

Greenberg Traurig (GT), a global law firm with locations across the world in 15 countries, has an exciting employment opportunity for you. We offer competitive compensation and an excellent benefits package, along with the opportunity to work within an innovative and collaborative environment. 

Join our Entertainment Practice Group as a Trademark Paralegal, located in our Los Angeles office.

We are seeking a highly skilled Paralegal who thrives in a fast-paced, deadline-driven environment. The ideal candidate possesses strong problem-solving and decision-making abilities, ensuring efficiency and accuracy in every task. With a dedicated work ethic and a can-do attitude, you will take initiative and approach challenges with confidence and resilience. Excellent communication skills are essential for collaborating effectively across teams and delivering exceptional client service. With a client-focused mindset and an initiative-taking approach, you will play a critical role in driving success, anticipating needs, and providing strategic solutions. If you are someone who demonstrates initiatives, adaptability, and innovation, we invite you to join our team.

This role will be based in our Los Angeles office, on an in-office basis. Regular in-office presence is required for day-to-day operations, as well as for team meetings, training opportunities, and relationship building.

Position Summary

The Trademark Paralegal will assist multiple attorneys in the firm’s Global Trademark and Brand Management Practice. This role requires professionalism, attention to detail, and the ability to manage multiple priorities efficiently and effectively. Candidate should also be flexible to work overtime as needed.

Key Responsibilities

• Manages a full docket of trademark-related deadlines, send timely reminders to clients and attorneys, and ensure that deadlines are handled

• Conducts in-house trademark screening searches on the TESS, SAEGIS, Corsearch, and WIPO Global Brand Database

• Prepares and files U.S. trademark applications, renewal applications, non-substantive office action responses, use declarations, extensions of time, and other USPTO filings

• Prepares and files international applications and extensions of international registrations with the World Intellectual Property Office (WIPO)

• Files Uniform Domain Name Dispute Resolution Policy (UDRP) complaints with the Forum and WIPO

• Records documents such as assignments, name changes, and lien releases with the USPTO’s Assignment Recordation Branch

• Files documents with the Trademark Trial and Appeal Board and prepare non-substantive procedural filings for filing with the Trademark Trial and Appeal Board

• Communicates professionally and accurately with clients to collect information and instructions related to trademark searches and filings

• Instructs and supervise trademark prosecution and trademark enforcement matters handled by foreign law firms and coordinate the preparation, execution, notarization, legalization, and apostille of documents filed with international trademark offices

• Investigates infringing uses of trademarks

• Intakes client requests for searches and filings and coordinate attorney handling of matters

• Creates customized trademark records reports for clients

• Supports client development activities

Qualifications

Skills & Competencies

• Must have a broad understanding of the USPTO’s Trademark Electronic Application System and how to prepare and file various types of trademark prosecution and maintenance documents via TEAS

• Experience with the USPTO’s Electronic System for Trademark Trials and Appeals and know how to file various types of trademark appeal and opposition/cancellation documents via ESTTA

• Demonstrate effective organizational, time management, project management, communication, and timekeeping skills

• Experience creating technically-proficient written communications without typographical errors

• Demonstrate proficiency with various technologies common in trademark and brand management

• Excellent customer service skills

Education & Experience

• Bachelor’s Degree required, Certificate in Paralegal studies from an accredited institution preferred; equivalent experience considered

• Certified Paralegal a plus

• Candidate will have minimum of 3 years’ experience as a trademark paralegal at a law firm or five years’ experience as a trademark professional

Technology

• Proficiency with