Job Description – Trademark Paralegal (Madrid Protocol & International Trademarks)
Position Title: Trademark Paralegal – International Trademark Prosecution
Experience: 2–6 Years
Practice Area: Intellectual Property – Trademarks
About the Role
We are looking for a detail-oriented Trademark Paralegal to support the management of international trademark portfolios, including Madrid Protocol applications and direct foreign trademark filings. The role involves coordinating with attorneys, clients, foreign associates, and trademark offices to ensure accurate and timely handling of trademark matters across multiple jurisdictions.
Key Responsibilities
Madrid Protocol Administration
Prepare and file international trademark applications through the Madrid Protocol under attorney supervision.
Manage subsequent designations, renewals, assignments, limitations, and other recordal requests.
Monitor and report provisional refusals, irregularity notices, and deadlines issued by WIPO and designated countries.
Coordinate with foreign associates and attorneys for responses to provisional refusals and related actions.
Maintain accurate records of Madrid portfolio activities and status updates.
International Trademark Prosecution
Assist in preparing and coordinating direct national trademark filings in foreign jurisdictions.
Compile filing documents, powers of attorney, declarations, and supporting evidence required by foreign trademark offices.
Liaise with overseas associates regarding filing requirements, office actions, oppositions, renewals, and recordals.
Track prosecution deadlines and ensure timely action on all matters.
Prepare filing instructions and status reports for client review.
Portfolio Management
Maintain trademark databases and docketing systems.
Monitor critical deadlines for filings, renewals, oppositions, office action responses, and maintenance requirements.
Generate portfolio reports and trademark summaries for clients and attorneys.
Conduct preliminary trademark searches and assist in preparing search reports.
Support trademark audits and portfolio reviews.
Client & Associate Coordination
Act as a point of contact for routine communications with clients and foreign associates.
Prepare and circulate filing confirmations, status updates, and reporting letters.
Obtain required documents, signatures, and instructions from clients.
Maintain organized electronic and physical trademark files.
Administrative Support
Assist attorneys in preparing documents for oppositions, cancellations, and enforcement matters.
Review invoices from foreign associates and coordinate billing information.
Prepare templates, forms, and internal reports.
Support due diligence exercises involving trademark portfolios.
Qualifications
Bachelor's degree (Law, Commerce, Business Administration, or related field).
2–6 years of experience in trademark prosecution or IP administration.
Experience handling Madrid Protocol and international trademark portfolios.
Understanding of WIPO procedures and trademark filing processes.
Excellent organizational and deadline-management skills.
Strong written and verbal communication skills.
Preferred
Experience working in an IP law firm or corporate IP department.
Familiarity with docketing systems such as Denny Meyer, Anaqua or similar platforms.
Knowledge of trademark filing requirements in major jurisdictions such as the US, UK, EU, Canada, Australia, UAE, Singapore, and China.
Advanced proficiency in Microsoft Excel and PowerPoint.
Key Competencies
Trademark docketing and portfolio management
Madrid Protocol administration
Deadline and workflow management
Attention to detail
Client service orientation
Coordination with international associates
Written communication and reporting
Ability to manage high-volume portfolios
Reporting To: Partner – Trademarks & Brand Protection
This position is ideal for a paralegal with strong international trademark experience who can independently manage docketing, Madrid filings, foreign associate communications, and global trademark portfolio administration.
Pay: ₹30,000.00 - ₹45,000.00 per month
Work Location: In person
