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…