Paralegal (IP&T Trademark)

New York, NY
Full Time
Legal
Experienced

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.
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