Paralegal (IP&T Trademark)

Position: Paralegal - Intellectual Property & Trademark Locations: Chicago, New York, St. Louis, or Washington, D.C. Salary: $100,000 - $120,000 (with potential bonus) Our client offers a comprehensive salary and benefits package that includes medical, dental, and vision coverage, a 401(k) plan with profit sharing, short-term and long-term disability insurance, life insurance, tuition reimbursement, paid time off, holidays, and discretionary bonuses. Overview: Our client is seeking a full-time Trademark Paralegal to join their Intellectual Property and Trademark (IP&T) team in either Chicago, St. Louis, Washington, D.C., or New York. This role will support local IP&T practitioners as well as the national practice group and will report to the Practice Group Leader. Key Responsibilities: Prepare and electronically file U.S. trademark prosecution and maintenance documents with the USPTO, including applications, office action responses, extensions, statements of use, affidavits, renewals, assignments, and powers of attorney. Conduct trademark screening searches using third-party platforms and perform common law searches. Communicate with clients regarding routine trademark prosecution and maintenance phases. Assist attorneys with Trademark Trial and Appeal Board (TTAB) filings, such as extensions for filing notices of opposition and consent motions. Prepare and file trademark documents with the World Intellectual Property Organization (WIPO), including applications for International Registration and responses to Notices of Irregularity. Collaborate with foreign counsel regarding the prosecution and maintenance of trademark applications/registrations outside the U.S., including notarization and legalization of documents. Prepare and record ownership and name change documents related to trademarks. Conduct due diligence on trademark portfolios and prepare customs registrations with U.S. Customs and Border Protection. Generate cost estimates for new filings and file copyright applications for registration. Assist with trademark enforcement matters, collaborating with foreign counsel regarding oppositions, cancellations, and cease-and-desist letters. Monitor attorney dockets and coordinate with internal personnel to manage deadlines. Accurately record billable hours using established practice and firm billing protocols. Qualifications: A minimum of a Bachelor's Degree is required. 4 to 10 years of experience in a trademark department, including at least 4 years focused on trademark prosecution; experience with copyrights is a plus. A strong desire to learn and grow within the field of intellectual property. Exceptional writing, editing, research, organizational, and analytical skills, with great attention to detail. Proficiency in Microsoft Excel, PowerPoint, and Word. Ability to manage multiple tasks efficiently under pressure. A strong work ethic with a willingness to work evenings and weekends when necessary. Professional demeanor with excellent organizational skills. Capability to guide and train junior team members. Discretion in handling confidential matters and documents. Ability to meet minimum billable hour requirements. Proficiency in Microsoft Office Suite, PDF creation tools, document management software, and timekeeping systems.

Created: 2024-11-05