Trademark Paralegal
Chicago, IL
Full Time
Legal
Mid Level
We are looking for an experienced Trademark Paralegal to join our client's esteemed Am Law 100 firm. This role involves supporting local Intellectual Property & Technology (IP&T) practitioners and the national IP&T Practice Group, reporting directly to the Practice Group Leader. The ideal candidate will have a solid background in law firms, with a stable employment history.
Key Responsibilities
- Prepare and file U.S. trademark applications, responses to office actions, and maintenance filings with the USPTO.
- Conduct trademark screening searches using third-party platforms and perform common law searches.
- Manage routine client communications regarding trademark prosecution and maintenance.
- Assist with filings before the Trademark Trial and Appeal Board (TTAB) and prepare WIPO trademark documents.
- Collaborate with foreign counsel on international trademark applications and maintenance.
- Manage due diligence for trademark portfolios and file customs registrations with U.S. Customs and Border Protection.
- Support trademark enforcement matters, including coordinating with foreign counsel on oppositions and disputes.
- Monitor attorney dockets to effectively manage deadlines.
Qualifications
- Education: Bachelor’s degree required.
- Experience: 4 to 10 years of experience in a trademark department, with a strong focus on trademark prosecution.
- Preferred Experience: Experience with copyright registration is beneficial.
- Skills:
- Exceptional writing, editing, research, organizational, and analytical skills.
- Proficiency in Microsoft Office Suite, document management software, and timekeeping software.
- Ability to work under pressure, handle multiple tasks efficiently, and work overtime and weekends as needed.
- Professional demeanor with strong attention to detail and organizational skills.
- Willingness to provide direction and training to junior team members.
- Excellent client service skills.
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