Trademark Paralegal

One of the world’s largest and most profitable international law firms, with offices in every major business center globally, seeks an experienced (4+ years) Trademark Paralegal in their busy Chicago, IL office.

8-4 or 9-5 with paid overtime and a hybrid work model of 2 days a week (Tuesdays & Wednesdays.) in the office

The firm is paying up to $80,000 – $105,000 with a bonus.

1500 billable hours requirement annually

Bring your incredible Trademark Paralegal skills to the award-winning firm and work with some of the industry’s finest local and national IP Practitioners in the IP & T practice group.  This position will report to the Manager, Paralegal Services, and the Paralegal Services Administrator.

Duties

  • 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 the prosecution and maintenance of trademark applications/ registrations outside of the United States, including attending to the 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

Experience & Qualifications

  • 4 to 10 years working in a trademark department with at least 4 years of trademark prosecution-related duties; experience with copyrights would be a plus
  • Excellent academic credentials and attainment of at least a Bachelor’s Degree required
  • 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

Benefits

The firm offers unsurpassed benefits, including health, dental, vision, life, LTD, STD, parental leave, Profit Sharing, 401k and many other perks, 20 days PTO, learning, growth, and substantive work.