IP Paralegal

Russell Tobin & Associates
November 4, 2020
New York, NY
Job Type


Title: IP Paralegal

Location: New York, NY preferred, but open to location

Type: Contract-to-Hire


Our client, an innovative technology start-up in the parking and delivery space, is currently seeking an IP Paralegal for its legal team. The IP Paralegal will support the management and development of the company’s IP portfolio. We are looking for candidates who are energetic, driven, and enjoys learning and working hard in a collaborative environment. We are looking for a paralegal who can manage our current day-to-day IP matters and portfolio management responsibilities with strong attention to detail, strong communication skills, influencing ability, relationship building, and ability to work independently with minimal supervision.


•       Assist outside counsel with IP-related matters and be on top of them from an internal perspective.

•       Coordinate and manage U.S. and foreign trademark filings, prosecution, and maintenance.

•       Manage trademark prosecution deadlines.

•       Collect evidence of use for trademark prosecution.

•       Perform and analyze trademark clearance searches.

•       Review and analyze trademark watch notices.

•       Conduct online investigations of possible infringements.

•       Review advertising and marketing materials for proper trademark usage and accuracy of marketing claims and sufficiency of corresponding substantiation.

Qualifications And Attributes

•       Bachelor’s degree required.

•       Minimum of 4+ years of experience as an intellectual property paralegal.

•       In-house experience is preferred.

•       Working knowledge of intellectual property.

•       Excellent written and oral communications skills.

•       Advanced proficiency in conducting trademark clearance searches and managing trademark watch notices.

•       Demonstrated experience coordinating, managing, and docketing U.S. and foreign trademark and patent filings, prosecution, and maintenance.

•       Ability to work independently and autonomously.

•       Highly organized and detail oriented with a strong ability to review and organize numerous legal documents.

•       Ability and willingness to take initiative to address problems and make continuous process improvements.

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