Federations & Governing Bodies
Trademark Paralegal
Mid Level
New York, United States
in office
Full time
Finance & LegalBasketballLegal CounselGovernance & Risk$90k – 110k
Job description
About the Role
The Trademark Paralegal joins a fast-paced legal team, balancing strategic portfolio maintenance with active digital brand enforcement. The role involves preparing submissions to the U.S. Patent and Trademark Office (USPTO) and the Trademark Trial and Appeal Board (TTAB) while identifying and addressing marketplace infringements.
Key Responsibilities
- Serve as an active member of the IP team managing the end-to-end lifecycle of the worldwide trademark portfolio of the NBA and its affiliated leagues, protecting the value of the company's brand and global IP assets.
- Prepare and file USPTO documents, including trademark applications, Requests for Extensions of Time, Statements of Use, Amendments, Section 8 & 15 Affidavits of Use, Declarations of Incontestability, and Renewals.
- Draft responses to USPTO Office Actions (including TEAS filings) and international Office Actions and notifications.
- Research and evaluate potential specimens of use for submission to the USPTO and to foreign jurisdictions that require a Declaration of Continued Use.
- Assist in overseeing U.S. and international trademark portfolios, including communicating with foreign outside counsel and coordinating directly with clients.
- Assist with preparing, filing, and managing TTAB proceedings.
- Audit e-commerce websites and digital marketplaces for counterfeit and unlicensed merchandise.
- Draft and submit IP infringement notices and demand letters, including assisting with a high volume of demand letters targeting print-on-demand networks and standalone international websites.
- Track online takedown requests to ensure compliance and conduct necessary follow-up, managing both automated vendor platforms and manual, time-intensive URL information collection.
- Manage targeted platform takedowns requiring deep web research, with a focus on TikTok Shop, Instagram sponsored ads, and marketplace account resellers.
- Assist in promptly and effectively addressing periodic digital enforcement spikes, such as those following high-profile player transfers, team milestones, and league championship events.
- Provide event-based enforcement support, including ongoing anti-piracy and brand protection enforcement targeting unlicensed event promoters during annual NBA All-Star and related events.
- Assist in onboarding new digital enforcement portals, online marketplaces, platforms, and third-party league vendors, including uploading bulk or large-scale sets of trademark registration certificates.
- Work with third-party technology vendors to streamline, coordinate, and execute global digital brand protection initiatives.
- Prepare regular reports detailing enforcement efforts, evaluating localised campaign impacts, analysing data, and tracking IP enforcement expenditures.
Required Experience & Qualifications
- At least 5 years of trademark or intellectual property paralegal experience in a law firm IP practice or an in-house legal department.
- Working knowledge of USPTO procedures, TEAS filings, TTAB practice, and Madrid Protocol/WIPO filings.
- Knowledge of trademark filing processes, international procedures, and foreign associate management.
- Proficiency with IP docketing software such as CPI, Anaqua, or Pattsy.
- Direct experience or familiarity with digital brand protection platforms and online marketplace takedown tools.
- Sharp visual attention to detail for tracking online infringements, collecting evidence of use, and matching product photos.
- Familiarity with document management systems and case-tracking databases.
- Advanced proficiency in Microsoft Office Suite, Adobe Acrobat, and online research tools.
- Fluency in core office productivity software, document management databases, and case-tracking databases.
- Excellent time-management skills to handle a diverse workflow spanning steady filings, prosecution, oppositions, and project-based digital audits.
- University degree or a professional paralegal qualification.
Preferred Skills
- Experience with Memotech is a plus.
Workplace
- Eligible employees currently have the option of working remotely one day per week.
Benefits & Perks
- Employees currently are eligible to receive an annual discretionary performance bonus, awarded at the sole discretion of the Company and subject to any terms and conditions set by the Company.
- Medical, dental, and vision cover.
- Life/AD&D insurance.
- Short- and long-term disability.
- Fertility and family-forming assistance.
- Wellbeing allowance.
- Educational assistance.
- Mental health coaching/therapy.
- Tax-advantaged accounts such as HSA and healthcare/dependent care FSAs.
- 401(k) retirement plan.
- Time off benefits including vacation, sick time, and personal days.
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