San Francisco - Senior Paralegal, Trademark

About us

At Winston Taylor, we set the standard, together.

Winston Taylor is a transatlantic law firm built for the businesses, people, and markets driving capital and innovation. Here, you're in the room. In the action. Sleeves rolled up. You'll work with leading clients. Disruptors. Fast-growth companies. And help them to stay one step ahead of the moment and make critical decisions that shape their future. We're present in the U.S., U.K., Europe, Latin America, and the Middle East, combining the scale and speed that clients demand. You'll be trusted with real responsibility from the outset and build experience through hands-on work. We take your progression personally. We provide the platform. You shape the work around your goals and aspirations. Step into the moments that matter. Join Winston Taylor.

Position summary

The Trademark Paralegal will work in a fast-paced environment, conducting pre-screening trademark searches, assisting in preparation of U.S. trademark applications, statements of use, extensions, affidavits, and renewal applications. The role will assist with the management of global trademark portfolios for clients, including handling certain aspects of U.S. and foreign trademark prosecution and maintenance and corresponding with foreign associates.

Position responsibilities

• Assist in managing trademark portfolios. Organize, maintain, and update files and docket information related to clients' trademark portfolios and monitor prosecution deadlines.
• Assist with preparation, filing, prosecution and maintenance of trademark applications and renewals with the U.S. Patent and Trademark Office and WIPO.
• Initiate foreign filings and correspond with foreign trademark agents regarding trademark applications and registrations. Coordinate the legalization of documents for foreign jurisdictions.
• Prepare status charts and communicate with clients regarding new and pending applications.
• Conduct on-line trademark searches and other investigatory functions.
• Assist attorneys with trademark due diligence and other tasks related to mergers, acquisitions, trademark licensing and other transactional matters.

Experience, skills, and qualifications

• Bachelor's degree required.
• 5+ years of experience as a Trademark prosecution paralegal required.
• ABA Approved Paralegal Certificate preferred.
• Must live within a commutable distance to a firm office with the ability to come into the office 3-4 days per week.
• Strong proficiency with Microsoft Office programs, including Word, Outlook, Excel, and PowerPoint.
• Ability to work independently and meet deadlines with minimal supervision.
• Strong sense of accountability, taking ownership over projects and resolving issues proactively with minimal supervision.
• Ability to follow complex instructions with high degree of accuracy and attention to detail.
• Ability to work concurrently on a variety of projects and work effectively under pressure.
• Ability to research, synthesize, and communicate large amounts of complex data.
• Excellent writing and communication skills.
• Ability to work as a team and assume responsibility for self and team. Ability display tact, collegiality, and good judgment in a team setting.
• Knowledge of U.S. Patent and Trademark Office and WIPO trademark rules and procedures. Some familiarity with trademark procedures in other countries.
• Familiarity with Corsearch, SAEGIS or similar trademark screening search tools.
• Knowledge of Foundation IP or similar trademark docketing system.
• Ability to handle confidential and sensitive information with appropriate discretion.
• Flexibility to work overtime as needed to meet business and client needs.
• Flexibility to travel may be required.
• Follow the ethical requirements as set forth by the Rules of Professional Conduct of the State.