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Prepare, review, and electronically file U.S. trademark applications, responses, renewals, and related documents with the USPTO
Work closely with trademark attorneys and business stakeholders to track deadlines, maintain dockets, and ensure timely responses to USPTO Office Actions and correspondence
Maintain accurate and up-to-date records within internal IP portfolio management systems (e.g., Anaqua, CPI, FoundationIP, or similar platforms)
Coordinate with international counsel on foreign trademark filings, renewals, extensions, and global portfolio management
Ensure all trademark filings comply with USPTO formalities, company policies, and applicable regulatory requirements
Monitor trademark deadlines, renewals, and watch notices, escalating risks and issues as appropriate
Identify opportunities to streamline trademark prosecution and portfolio management workflows and improve operational efficiency
Create and maintain an internal trademark docket, featuring country-specific claim of rights, scope of protection, registration terms, renewal information, and trademark prosecution history
Track company activities to support the development of use-based trademark rights, including specimen collection activities necessary for trademark registrations and renewals
Participate in decisions regarding formal responses to governmental Office Actions during the trademark prosecution process, and interface with outside counsel on instructions to proceed
Support efforts to oversee and detail outside counsel spend/performance metrics
Requirements:
Candidate must be located in the San Francisco, Bay Area
Bachelor’s degree or equivalent experience
Paralegal Certificate preferred
5-6+ years of experience supporting trademark prosecution and portfolio management in a law firm or corporate legal department
Strong knowledge of USPTO trademark rules, procedures, forms, and systems (including TEAS and TSDR)
Proficiency with IP docketing and trademark management tools (e.g., Anaqua, FoundationIP, CPI, Pattsy, or similar)
Exceptional attention to detail with the ability to manage multiple deadlines and priorities in a fast-paced environment
Excellent written and verbal communication, organization, and collaboration skills
Open to working in an engagement-based role, seconded to clients on a temporary basis for approximately six months at a time