Trademark Paralegal

Trustpoint.One
Published
January 14, 2023
Location
Chicago, Illinois
Category
Job Type

Description

Trustpoint One is assisting a top-tier law firm in its search for a Trademark Paralegal in the Chicago office. The position will support the local Intellectual Property &Technology group.

Trademark Paralegal Responsibilities:

-             Prepare and file U.S. trademark prosecution and maintenance documents electronically with the USPTO including but not limited to: applications, office action responses, extensions of time, statements of use, affidavits, renewals, assignments and powers of attorneys

-             Conduct trademark screening searches using third search party platforms and common law searches

-             Correspond with clients regarding routine phases of trademark prosecution and maintenance matters

-             Assist attorneys in TTAB filings, i.e. extensions of time to file a notice of opposition, consent motions

-             Prepare and file trademark documents with WIPO including but not limited to applications for International Registration, responses to Notices of Irregularity, renewals, assignments and powers of attorney

-             Work with and correspond with foreign counsel in connection with prosecution and maintenance of trademark applications/ registrations outside of the United States, including attending to notarization and legalization of documents

-             Prepare and record ownership and change of name documents related to trademarks

-             Conduct due diligence on trademark portfolios

-             Prepare and file customs registrations and renewals with the U.S. Customs and Border Patrol.  Prepare cost estimates for new filings

-             Prepare and file copyright applications for registration

-             Assist with trademark enforcement matters including working with and corresponding foreign counsel regarding potential oppositions, cancellations and cease & desist letters

-             Assist with monitoring attorney dockets and working with internal personnel to manage deadlines

-             Record billable hours timely and accurately utilizing practice/firm billing protocols

-             Perform other duties as necessary to fully meet the requirements of the position based on practice/client needs

Quallifications

-             4 to 10 years working in a trademark department with at least 4 years of trademark prosecution related duties; experience with copyrights is plus

-             Bachelor’s Degree and excellent academic credentials

-             Passionate about learning new skills and intellectual property

-             Exceptional writing, editing, research, organizational, and analytical skills and attention to detail

-             Expert in Microsoft Excel, PowerPoint, and Word

-             Ability to work well under pressure and handle multiple, simultaneous tasks efficiently

-             Strong work ethic, including willingness to work evenings and weekends as needed

Interested and qualified candidates are encouraged to submit a resume for immediate consideration.

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