Trademark Paralegal Chicago, St. Louis, Washington, D.C. or New York

3 months ago

New York, United States Personnel Management Solutions, Inc. Full time
Job DescriptionJob Description

Law firm is currently recruiting for 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 Practice Group Leader, with daily work performed primarily under the direction of assigned practice group lawyers and/or paraprofessionals. Expected responsibilities will include:

  • 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

Law firm offers a competitive salary and benefits package including medical, dental, vision, 401k, profit sharing, short-term/long-term disability, life insurance, tuition reimbursement, paid time off, paid holidays and discretionary bonuses.

Position 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 
  • Proficiency in Microsoft Office Suite, PDF creation tool(s), document management software, Elite or other timekeeping software, Internet required
  • Excellent client service, ability to work overtime and travel as needed
Company DescriptionSince the early 1990s, Personnel Management Solutions, Inc.'s recruiting specialists have been a valuable resource to many different companies in various industries throughout the Midwest and Florida. Although much of our expertise is within law firms and the law departments of major corporations, as well as having a strong presence within the medical field, we have also served accounting and architectural firms, automotive and manufacturing companies, non-profit organizations, property management, and many other industries.Company DescriptionSince the early 1990s, Personnel Management Solutions, Inc.'s recruiting specialists have been a valuable resource to many different companies in various industries throughout the Midwest and Florida. Although much of our expertise is within law firms and the law departments of major corporations, as well as having a strong presence within the medical field, we have also served accounting and architectural firms, automotive and manufacturing companies, non-profit organizations, property management, and many other industries.

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