Job Description
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
Start Date:
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 at .
About Inventus Law
Inventus Law
inventuslaw.com
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