Trademark Paralegal

Company:  Lewis Brisbois
Location: Fort Lauderdale
Hours: Full Time
Type: Permanent
Job Requirements / Description
The Trademark Paralegal's purpose is to support attorneys in all aspects of domestic and international prosecution. Through formal education, training and experience, paralegals are expected to have knowledge and expertise regarding the legal system and substantive and procedural law which qualify them to do work of a legal nature under the supervision of an attorney. The paralegal will perform a broad range of case-related duties from case inception to conclusion all under the supervision of an attorney. This is a full-time position working 37.5 hours per week. We offer a competitive salary and benefits package including a 401K with employer contribution.

The following list of essential functions is not exhaustive and other duties may be assigned in addition to those listed. The items listed are considered daily functions associated with this position: 

Work hand-in-hand with attorneys on trademark portfolio management. 

Review and organize all records, documents and deposition testimony to ensure completeness of all file materials.

Draft correspondence with clients and foriegn associates. 

Attend team calendar meetings and make sure that all individuals involved in any case are aware of all calendar items

Conduct research through the United States Patent and Tradaemark office as needed.

Assist in the preparing responses to office action as necessary.

Record documents in United States Patent and Tradaemark office.

Arrange legalization of documents at various consulates.

Coordinate and arrange for required fees to be paid during trial, including experts, jury and reporter fees.

Act as liaison between attorney and clients, carriers, experts, witnesses and other counsel, when requested by attorney

May provide computer litigation support.

Qualified candidates will have a minimum of three (3) years trademark prosecution experience in a legal environment and possess a certificate from an ABA approved paralegal program. An individual in this position must be able to perform each essential duty satisfactorily. The requirements listed below are representative of the education, experience, skills, knowledge and abilities required. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential duties.



Follow the ethical requirements as set forth by the Rules of the Court and State Bar

Knowledge of State/Federal court rules and procedures (including calendaring)

Must have experience assisting in initial drafting and filing and prosecution of patent documents, communicating with the PTO and and maintaining clients' domestic and international intellectual property portfolios.

Coordinate and communicate with clients and foreign associates regarding trademark prosecution.

Must be proficient in using the PTO's online filing systems such as PAIR, EFS Web, Patent Center, Global Dossier, ePCT, WIPO IP Portal

Manage a full docket of trademark deadlines, send timely reminders, and ensure that deadlines are handled

Assist with preparation and filing of responses to trademark office actions

Record documents such as assignments, name changes, and lien releases with the USPTO and comprehend chain of title issues and ability to perfect same

Instruct 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 foreign patent and trademark offices

Create customized trademark records reports for clients

Experience with CPI trademark software preferred.

Must possess excellent oral and written communication skills, be detail-oriented, and have the ability to manage multiple priorities and track extensive details.

Apply Now
An unhandled exception has occurred. See browser dev tools for details. Reload 🗙