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Form of workJob Description
Paralegal (Trademark - Chicago)
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
