IP Trademark Paralegal; Offices - CA

Sheppard Mullin Richter & Hampton LLP, a global Am Law 50 firm, has an opening for an IP Trademark Paralegal to join any of our California offices.

The offices we are considering are:
Los Angeles, Century City, Orange County, Del Mar, Downtown San Diego, Silicon Valley and San Francisco.

Sheppard Mullin is currently hiring an experienced, well-organized Trademark Paralegal to support trademark IP attorneys in all aspects of trademark prosecution. This includes conducting research, preparing and filing legal documents, communicating with clients and government agencies, and maintaining accurate records. The job requires extensive knowledge of U.S. and Foreign trademark prosecution rules and procedures. Technical, organizational, and administrative skills are necessary to handle various duties and responsibilities outlined below.

The position handles multiple projects, often in a fast-paced, high-pressure environment, requiring prioritization and flexibility. Collaboration with firm personnel at all levels is integral to the role. The ideal candidate will have at least 4 years’ experience in trademark prosecution and US and foreign filings.

The Trademark Paralegal will primarily support trademark attorneys in all aspects of trademark prosecution. The job requires extensive knowledge of U.S. and Foreign trademark prosecution rules and procedures. Technical, organizational, and administrative skills are necessary to handle various duties and responsibilities outlined below. The position handles multiple projects, often in a fast-paced, high-pressure environment, requiring prioritization and flexibility. Collaboration with firm personnel at all levels is integral to the role.

• Communicate regularly with the team. Double check work product before presenting to attorneys for review and again before sending or filing.
• Conduct fact investigation and development, analysis and strategy, and document and file management.
• Manage large trademark portfolios and monitor deadlines; handle all official communication, office actions, and other trademark prosecution activities for foreign and domestic trademarks.
• Must be available and able to work during core business hours.

• Conduct and analyze preliminary trademark clearance searches and prepare summary of findings.
• Work with outside vendors to order comprehensive full search reports, set-up trademark watching services, and other monitoring services.
• Research and prepare cost estimates for filing domestic and foreign trademark applications and renewals.
• Prepare and file U.S. trademark applications, responses to office actions, requests for extensions of time, statements of use, declarations of use, declarations of incontestability, renewals, and other filings related to U.S. trademark prosecution.
• Prepare and file Madrid Protocol international applications, responses to irregularity notices, subsequent designations, and WIPO renewals.
• Prepare and file state trademark applications and renewals.
• Correspond with foreign associates to file national trademark applications, provisional refusal responses, renewals, oppositions/cancellations, and other matters related to foreign trademark prosecution.
• Record ownership transfer, security agreements and releases with the US Patent and Trademark Office.
• Review and report trademark watch notices.
• Assist with the preparation and filing of TTAB proceedings, and other trademark opposition, infringement, and enforcement matters.
• Order certified copies of various trademark and corporate documents and oversee the legalization process of documents.
• Draft trademark assignments, security agreements, and releases of security agreements, and record ownership transfers, liens, and releases and other updates with the USPTO and WIPO, and coordinate recordation of ownership transfers and updates with foreign associates
• Review and monitor docket or work with docketing team to track all U.S. and foreign trademark deadlines.
• Manage and oversee U.S. and international trademark portfolios and prepare status reports.
• Assist with other trademark matters, such as cost estimates, budgets, UDRP actions,…