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.