Trademark Paralegal

Trademark Paralegal

Location:

Portland, OR

Seattle, WA

Sacramento, CA

Full time

Job Description:

Stoel Rives LLP has an immediate opening for a Trademark Paralegal in either our Portland, Sacramento, or Seattle office. This position assists the attorneys and fellow paralegals (“practitioners”) in handling a variety of billable and operational projects or tasks related to trademark and copyright matters, depending upon the practitioner and client needs. This position receives daily supervision and assignments from practitioners in the practice group.

 

ESSENTIAL FUNCTIONS/RESPONSIBILITIES

Trademark Administration:  The TIP Paralegal will receive assignments directly from the practitioners in the TIP department for the following tasks:

 

All billable non-attorney tasks relating to U.S. trademark applications, Madrid Protocol applications, and foreign trademark applications; including but not limited to: application filings, extensions, statements of use, registration maintenance and renewal and recording assignments, security interests and releases.

 

Assist with office action responses in the USPTO, WIPO and with foreign associates.

 

Conduct trademark searches and prepare draft search reports.

 

Assist with opposition and cancellation filings with the TTAB.

 

Assist with UDRP filings with WIPO and other arbitrators.

 

Assist with trademark litigation filings in federal and state courts.

 

Work with docketing staff to maintain, revise and update trademark docket. 

 

Prepare copyright applications.

 

Prepare and send client reminder correspondence and updates, work with clients to develop allegations of use and other factual information. 

 

Prepare and send foreign associate correspondence regarding new applications, responses, renewals, and recording assignments, security interests and releases.

 

Provide and maintain electronic and paper files, as well as review and approval of all docketed deadlines.

 

Assist with investigation, research, USPTO informational searches and internet searches, review documents, and summarize findings as directed.

 

Assist attorneys with corporate due diligence including review of trademark portfolios, preparation and review of schedules, chain of title review and cleanup.

 

Handle new client file intakes, and new counsel transfers.

 

Docket Software Responsibilities

Learn and maintain complete knowledge of the patent and trademark docketing software program (Foundation IP), train staff, assist practitioners in the use of the docket system, and maintain updated procedures requested by practitioners regarding implementation of firm docketing policies.

 

Document Organization

Photocopy, file, and search files for documents; prepare, index, and review documents for delivery, storage and destruction.

 

Other duties as assigned.

 

ESSENTIAL CAPABILITIES

Must possess the following capabilities: strong oral and written communication, ability to learn, outstanding attention to detail, initiative, adaptability, dependability, flexibility, client service and teamwork orientation, ability to focus attention for long periods of time, and work without direct supervision in a fast-paced environment.  Must be comfortable with, and have the ability and interest in, delivering an accurate, high-stakes performance on a day-to-day basis. This position involves extensive client contact.

 

Technical/Professional Knowledge

Must have strong aptitude for computer software application programs and be able to learn quickly or have working knowledge of applicable software programs for carrying out trademark and copyright duties, including word processing, spreadsheets, databases, trademark and copyright filing programs,  online services, records management systems, and docketing programs (currently, we utilize Foundation IP docketing software), in a Windows-based environment.  Must be capable of using the firm’s timekeeping system to capture time for all billable tasks and to record disbursements, in a competent and timely manner to ensure proper billing for all billable tasks. Must be capable of operating a personal computer, printer, photocopier, e-fax, telephone, and other regular office equipment.

 

Must be comfortable using USPTO systems including TEAS, Trademark Center, and Assignment Center. Should have some experience with WIPO’s Madrid filing system.

 

Must be comfortable utilizing firm‑approved artificial intelligence and automation tools, as appropriate, to support research, docketing, document preparation, and administrative tasks, in compliance with firm policies, client requirements, confidentiality obligations, and applicable professional responsibility standards.

 

Physical and Mental Capabilities

Must be able to enter computer data.  Must have a high level of concentration and attention to detail, and have adequate addition and subtraction skills.  Must be capable of reading and interpreting information in printed, handwritten or computer form, instructions, legal correspondence, memoranda, forms, documents, reference publications, or reference books.

 

EDUCATION & EXPERIENCE

High school degree or equivalent required; college degree preferred.  Must have paralegal certificate in appropriate jurisdiction and at least 5+ years’ relevant experience.

 

NORMAL WORK HOURS

This is a hybrid position, is non-exempt, and eligible for overtime compensation. Regular office hours are 8:30 - 5 p.m., Monday through Friday.  Occasional overtime may be necessary and may be on short notice.

 

How You Will Live Life Well at Stoel Rives: Compensation, Benefits, and More!

The pay range for this position is $73,000 - $123,000; however, the base compensation presented to a candidate may vary based on skills and overall experience. This salary range is based on market location.

 

In addition to base compensation, Stoel Rives has a total rewards program that includes an annual discretionary bonus and rich benefits offerings. For example, our benefits offerings include paid family & medical leave, competitive PTO, and remote work options. We offer competitive and robust medical, dental, vision, life long-term disability, AD&D, EAP, FSA and Voluntary Life, ADD, and LTC options. We also provide a generous firm-contributed health savings account, a pre-tax transportation/parking plan including an employer monthly subsidy of $100 for individuals who work 3+ days/week in the office, and an annual contribution into the employee’s retirement plan.

 

No recruiters please.