Job Details
Please send resume in WORD format should you be interested in the following Trademark Paralegal position located in Chicago, St. Louis, Washington, D.C. or New York. This is a full-time, direct-hire position with a salary between 80-110K plus awesome benefits. If you are not interested, please pass along to your colleagues as we do pay referral fees.
Location: Chicago, St. Louis, Washington, D.C. or New York (candidates must live within a commutable distance)
Salary: 90-120K depending on location and experience
Hybrid: 3 days in office/2 days remote
Degree required: YES
Minimum billable hour requirement: 1,500
Weekly hours: 37.5
Our client is seeking a full-time Trademark Paralegal to be based in our Chicago, St. Louis, Washington, D.C. or New York office. This position will support the local IP&T Practitioners and the national IP&T Practice Group. This position will report to the Manager, Paralegal Services and/or the Paralegal Services Administrator.
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
Experience & Qualifications:
- Attainment of at least a Bachelor's Degree is required
- 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
- 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
- Professional demeanor, attention to detail, and great organizational skills are essential
- Ability to provide direction and training to junior team members
- Ability to maintain discretion and privacy with confidential matters and documents
- Ability to meet minimum billable hourly requirement