Trademarks Paralegal

The Role

We are seeking an experienced and highly organised Trademark Paralegal to join our intellectual property practice. The ideal candidate is a proactive, detail-driven professional with hands-on experience managing trademark portfolios and supporting trademark prosecution from application through registration and beyond. You will play a pivotal role in supporting our attorneys and clients across all stages of the trademark lifecycle, ensuring that deadlines are met, clients are kept informed, and filings are completed accurately and on time.

Key Responsibilities

Portfolio Management

• Maintain and manage trademark portfolios for a diverse range of domestic and international clients, ensuring all critical deadlines are tracked, docketed, and communicated in a timely and accurate manner
• Monitor and manage docketing systems for all prosecution milestones, including filing deadlines, office action response deadlines, publication dates, notice of allowance deadlines, statement of use deadlines, and maintenance and renewal filing dates
• Generate and distribute timely deadline reminder communications to clients and supervising attorneys

USPTO Filings and Prosecution Support

• Prepare and file trademark applications before the USPTO across multiple international classes, under the direction of supervising attorneys
• Submit responses to USPTO Office Actions under attorney supervision, including gathering and organising supporting documentation, specifically related to procedural objections
• Prepare and file Statements of Use (SOU) and Extensions of Time to File Statements of Use in connection with intent-to-use applications
• Prepare and file post-registration maintenance documents, including Section 8 Declarations of Use, Section 15 Declarations of Incontestability, and Section 9 Renewal Applications
• Prepare and organise evidence of use for inclusion in use-based filings and maintenance submissions
• Monitor and manage Notice of Allowance deadlines and coordinate timely responses with clients and attorneys

Trademark Searches

• Conduct preliminary and comprehensive trademark clearance searches using USPTO TESS and other search tools and databases
• Organise and present search results to supervising attorneys in a clear and structured format to support legal opinion preparation

Client Communication and Reporting

• Serve as a primary point of contact for clients on day-to-day prosecution and portfolio management matters
• Prepare and distribute status reports to clients on the progress of pending applications, maintenance filings, and upcoming deadlines
• Send publication notices, notice of allowance notifications, and registration certificate transmittals to clients promptly and accurately
• Respond to routine client enquiries regarding the status of trademark matters under attorney supervision
• Maintain accurate and up-to-date records in the firm’s docketing and matter management systems

Qualifications

• Minimum of 2 years of dedicated trademark paralegal experience, gained at a law firm, in-house legal department, or equivalent setting
• Demonstrated hands-on experience with USPTO trademark prosecution, including preparation and filing of trademark applications, Office Action responses, SOU filings, and Section 8/9 maintenance documents
• Proficiency with USPTO TESS and TSDR databases and electronic filing systems (USPTO EFS / TEAS)
• Strong organisational skills and meticulous attention to detail, with demonstrated ability to manage large volumes of matters and competing deadlines simultaneously
• Ability to work independently with minimal supervision while maintaining a high standard of accuracy and professionalism
• Genuine passion for intellectual property and a proactive, client-first approach to work

The anticipated start date for this position is immediate, subject to the successful conclusion of the firm's recruitment and onboarding process. Candidates who are in a position to commence employment without delay are encouraged to submit their applications promptly.