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Greenberg Traurig

Trademark Paralegal

Reposted 21 Days Ago
Be an Early Applicant
In-Office
Miami, FL
Senior level
In-Office
Miami, FL
Senior level
The Trademark Paralegal manages trademark deadlines, prepares filings, conducts searches, and coordinates with foreign law firms on matters related to trademark enforcement and prosecution.
The summary above was generated by AI

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 Intellectual Property- Trademark team as a Trademark Paralegal.

We are seeking a highly skilled professional 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 demonstrate initiatives, adaptability, and innovation, we invite you to join our team.

This role will be based in our Atlanta office, on a in-office basis. Regular in-office presence is required for day to day operations. This role reports to the Co-Chair of the firm’s global Trademark & Brand Management Group.

Position Summary

Greenberg Traurig is seeking an experienced Trademark Paralegal to join its Global Trademark and Brand Management Practice for the Atlanta office. The role involves managing trademark-related deadlines, preparing and filing U.S. and international trademark applications, conducting trademark searches, and coordinating with foreign law firms on prosecution and enforcement matters. Ideal candidates will have strong organizational and communication skills, proficiency with USPTO and WIPO systems, and experience in trademark prosecution, maintenance, and dispute resolution. 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 prepares 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 supervises 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

  • Performs intake of 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 & Prior 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 seven years’ experience as a trademark paralegal at a law firm or five years’ experience as a trademark professional

Technology

  • Proficiency with Windows-based software and Microsoft Word, Excel and Outlook, and other informational databases required

GT is an EEO employer with an inclusive workplace committed to merit-based consideration and review without regard to an individual’s race, sex, or other protected characteristics and to the principles of non-discrimination on any protected basis. 

Greenberg Traurig East Palo Alto, California, USA Office

1900 East University Ave., East Palo Alto, United States, 94303

Greenberg Traurig San Francisco, California, USA Office

101 Second Street, Suite 2200, San Francisco, United States, 94105

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