Senior Trademark Paralegal (New York, NY) (#4091)

We are seeking a Senior Trademark Paralegal in our New York office. As a valued team member, you are a critical part of Dorsey's client service team, working collaboratively with lawyers and clients on an array of substantive client matters. Are you a strong communicator and enjoy working independently and with a team? If you are a skilled paralegal with trademark experience and strong organizational skills, then we would appreciate hearing from you.

In this role, you will:

- Assist attorneys in drafting correspondence to clients regarding U.S. and international trademark prosecution events.
- Under the guidance of attorneys, coordinate and communicate directly with clients regarding routine or procedural trademark prosecution events.
- Assist attorneys in management of U.S. and international trademark portfolios, including reviewing and maintaining accuracy of trademark files, understanding docket and deadlines, and action needed on each file.
- Draft various trademark related documents covering all aspects of U.S. trademark prosecution for attorney review and file under attorney direction with the U.S. Trademark Office.
- Assist attorneys in trademark enforcement matters across domestic and international jurisdictions.
- Monitor online marketplaces, websites, and related channels for unauthorized brand use, and coordinate takedown efforts to address infringing content.
- Investigate suspected counterfeiting, misuse of trademarks, and deceptive brand activity, compiling findings for legal review and follow-up action.
- Evaluate trademark watch notices, identify potential conflicts, and prepare clear summaries with recommended next steps for attorneys.
- Draft and organize enforcement communications, including cease-and-desist correspondence and supporting materials for dispute matters.
- Assist with contested trademark proceedings such as oppositions, cancellations, and domain-related disputes, while coordinating evidence and case documentation.
- Collect, organize, and maintain proof of use, priority, and infringement to support enforcement strategies and legal filings.
- Communicate attorney instructions to local counsel regarding international trademark matters and preparation and assembly of ancillary documentation; oversee payment of local counsel invoices.
- Navigate online databases for application status updates and downloading of documents, including the U.S. and international trademark offices.
- Apply competent knowledge of trademark legal procedures, terminology, and activities to paralegal tasks.
- Communicate attorney instructions to local counsel regarding international trademark matters and preparation and assembly of ancillary documentation; oversee payment of local counsel invoices.
- Assist with trademark search and clearance processes.
- Assist with trademark due diligence projects.
- Preparation of copyright documentation for attorney review and file under attorney direction with the U.S. Copyright Office.
- Assist with trademark clearing house and domain name related activities.
- Navigate online databases for application status updates and downloading of documents, including the U.S. and international trademark offices.
- Conduct substantial country law requirements research, including documentation and filing
requirements, and present for attorney action.
- Apply expert knowledge of trademark legal procedures, terminology, and activities to paralegal tasks.
- Serve as senior resource for organization procedures and policies; may perform department
administrative or lead paralegal activities including coordination of paralegal overflow work and training.
- Perform other tasks as necessary or as directed.

What we're looking for:

- Bachelor's degree or completion of paralegal program or equivalent experience and familiarity with Intellectual Property.
- At least 7 years of related experience.
- Excellent oral and written communication skills; demonstrated analytical ability; ability to set priorities; knows ethical boundaries of position and when to consult with attorney; responsible; resourceful; professional.
- Ability to proactively problem-solve and exercise independent judgement and decision making skills.
- Excellent organizational skills and ability to manage a large volume of detailed tasks.
- Expert understanding and knowledge of the trademark process, docketing, and filing responsibilities.
- Expert knowledge of, and exposure to, the U.S Trademark Office online databases including the electronic filing system (MyUSPTO and TTAB).
- Expert knowledge of, and exposure to, international trademark online databases.
- Expert knowledge of, and exposure to, docketing databases, Foundation IP is preferred.
- Expert in conducting online searches in databases.

About Dorsey:

Dorsey & Whitney is a global law firm with over 650 lawyers across 22 offices in the United States, Canada, Europe and Asia. We provide strategic legal counsel to companies worldwide across a diverse range of industries, including banking & financial institutions; development & infrastructure; energy & natural resources; food, beverage & agribusiness; healthcare & life sciences; and technology.

Dorsey offers opportunities for advancement within a collaborative and dynamic environment, with competitive pay and excellent benefits. Our benefits are available to business professionals working 17+ hours/week along with their dependents, including spouses and domestic partners regardless of gender. Dorsey's benefit package includes: comprehensive medical insurance with coverage for infertility, gender-affirming care, behavioral health, and access to virtual providers; dental insurance; vision insurance; 401(k) retirement savings plan with Firm contribution; basic and optional life insurance; short and long-term disability; paid time off; up to 8 weeks of paid parental leave with up to an additional 6-8 weeks of paid short-term disability for business professionals who give birth; paid holidays; paid volunteer day; discretionary bonuses (if bonus eligible); adoption assistance; healthcare, dependent care, and transportation pre-tax reimbursement accounts; back-up child and elder care program; education and college advising program; virtual tutoring; wellbeing programs and activities; mass transit program (certain offices); travel assistance program; 24/7 employee assistance program with access to five confidential visits with a licensed counselor at no cost. (Some benefits are subject to eligibility criteria.)

One of our greatest strengths is a friendly, cooperative culture that values and appreciates each individual. Dorsey has received external recognition for our welcoming workplace, including:

- Mansfield Certification Plus (Diversity Lab)
- Best Law Firms for Women (National Association of Female Executives and Flex-Time Lawyers)
- 100% rating on the Corporate Equality Index (Human Rights Campaign)
- Gold Standard Certification (Women in Law Empowerment Forum)
- Top 100 Adoption-Friendly Workplace (Dave Thomas Foundation for Adoption)

Reasonable Accommodations:

Dorsey is committed to providing disability and religious-based reasonable accommodations, as well as menopause, pregnancy or lactation-related reasonable accommodations. If you require a reasonable accommodation during the application and hiring process, or if you have questions about a workplace reasonable accommodation, please contact us at 612-492-5178.

How to Apply:

Dorsey & Whitney LLP accepts online applications. Please go to the "Careers" section of the Dorsey website at www.dorsey.com/staffjobs and complete Dorsey's online application form. We are unable to accept application materials by mail or email.

Dorsey & Whitney LLP is an EEO/AAP/Disabled Vets Employer. All qualified applicants will receive consideration for employment without regard to race, color, creed, religion, ancestry, sex, national origin, sexual orientation, gender identity, affectional preference, disability, age, marital status, familial status, status with regard to public assistance, military or veteran status, or any other legally-protected status.

Dorsey & Whitney LLP participates in E-Verify.

The pay range for this position in New York City only is $63.05 to $85.71 per hour.

This range represents Dorsey's good faith estimate of likely compensation at the time of posting. Actual pay will be dependent upon a number of factors, including the candidate's experience, qualifications, skills and location and may fall outside of the range indicated.

Dorsey estimates it will accept applications through June 25, 2026.

Please note that Dorsey is not currently accepting search firm submissions in connection with this opening.

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Office Location:
New York, NY