Trademark Paralegal Specialist

4 weeks ago


Chicago, Illinois, United States Crowell & Moring Full time

Job Summary

The Trademark Paralegal Specialist is a key member of our team, responsible for providing support in trademark law matters. This role requires a strong understanding of domestic and international trademark prosecution law, as well as excellent organizational and communication skills.

Responsibilities

  • Conduct preliminary US searches and worldwide searches for trademark availability
  • Review and distribute trademark watch notices for clients to attorneys for further review and follow up
  • Conduct trademark use investigations and other due-diligence related activities
  • Assist in infringement, opposition, and related proceedings, including discovery-related activities, cite checking and filing
  • Prepare draft reporting letters and responses to Office Actions for attorney review
  • Review specimens and prepare draft declarations
  • Coordinate take-down notices with social media platforms
  • Prepare formal assignments and agreements for trademark matters and record relevant materials with the United States Patent and Trademark Office
  • Prepare trademark status summary reports
  • Prepare worldwide cost estimates for filing and maintenance of trademarks
  • Participate in risk management by meeting internal and statutory due dates, reviewing file histories and client instructions, preparing accurate documents, and maintaining files
  • Coordinate relationships with vendors and review agent and vendor invoices in compliance with firm policies and procedures
  • Handle non-routine intellectual property projects as needed

Qualifications

  • General knowledge of domestic and international trademark prosecution law
  • Ability to prepare accurate and complete documents meeting US Trademark Office requirements
  • Ability to identify and meet deadlines based on trademark office correspondence, client instructions, and other documents, and manage associated risks by coordinating with attorneys to file in advance of due dates whenever possible
  • Intermediate PC knowledge, MS Word, PDF conversion tools, MS Outlook, and document management software
  • Intermediate knowledge related to use of equipment including scanners, copiers, and facsimile machines
  • Basic knowledge of MS Excel, PowerPoint, computerized docketing, and billing systems
  • Ability to conduct legal research regarding US trademark law rules and procedures
  • Ability to organize and prioritize work in a dynamic and complex environment to meet deadlines and daily requirements
  • Ability to communicate persuasively, both orally and in writing
  • Ability to analyze and interpret information from various sources, apply critical and creative thinking to draw conclusions or develop solutions to complex problems
  • Proven leadership capabilities in intellectual property areas
  • Ability to provide quality client service to internal and external contacts regarding complex matters, requiring patience, creativity, and discretion
  • Interpersonal skills necessary to communicate information with tact and courtesy
  • Ability to follow instructions effectively from diverse groups of clients, attorneys, and staff
  • Flexibility regarding work schedule and availability for overtime as requested to accommodate client and attorney business needs
  • Ability to work effectively both independently and with others in a cooperative, enthusiastic, and friendly manner to accomplish position functions and participate in team efforts
  • Ability to perform required non-billable administrative tasks as needed

Education and Experience

The position requires a Bachelor's Degree in a related field. Equivalent training and experience may substitute for education. A minimum of three years of increasingly responsible, directly related experience is required, during which knowledge, skills, and abilities applicable to the position were demonstrated.

Benefits

Crowell & Moring LLP offers a competitive compensation and comprehensive benefits package, including healthcare, vision, dental, retirement, and all-purpose leave and progressive options such as back up childcare, wellness programs, cultural events, and social activities. We take great pride in our positive, friendly culture that rewards hard work and success, at the same time recognizing the importance of family and community service.

Equal Employment Opportunity

Crowell & Moring LLP is an equal opportunity employer and participates in the E-Verify program.



  • Chicago, Illinois, United States Beacon Hill Staffing Group Full time

    Job Title: Trademark ParalegalWe are seeking a highly skilled Trademark Paralegal to join our team at Beacon Hill Staffing Group. As a Trademark Paralegal, you will be responsible for conducting U.S. and global trademark searches, assisting with trademark filings, oppositions, and related proceedings, and preparing draft responses to Office Actions and other...

  • Trademark Paralegal

    4 weeks ago


    Chicago, Illinois, United States Inova Health System Full time

    Job Title: Trademark Paralegal - Data Entry SpecialistJob Summary:We are seeking a highly skilled Trademark Paralegal - Data Entry Specialist to join our team at Inova Health System. The successful candidate will be responsible for assisting with all aspects of trademark registration matters, including trademark prosecution, maintenance, renewals, conflicts,...


  • Chicago, Illinois, United States Beacon Hill Staffing Group Full time

    Job Summary:We are seeking a highly skilled Trademark Paralegal to join our team at Beacon Hill Staffing Group. As a Trademark Paralegal, you will be responsible for conducting U.S. and global trademark searches, assisting with trademark filings, oppositions, and related proceedings, and preparing draft responses to Office Actions and other legal documents....

  • Trademark Paralegal

    4 weeks ago


    Chicago, Illinois, United States Beacon Hill Full time

    Job Title: Trademark ParalegalJob Summary: We are seeking a highly skilled Trademark Paralegal to join our team at Beacon Hill Legal. The ideal candidate will have a strong knowledge of domestic and international trademark law and be proficient in MS Word, Outlook, and document management software.Responsibilities:Prepare draft responses to Office Actions...


  • Chicago, Illinois, United States Abbott Laboratories company Full time

    About AbbottAbbott is a global healthcare leader that helps people live more fully at all stages of life. Our portfolio of life-changing technologies spans the spectrum of healthcare, with leading businesses and products in diagnostics, medical devices, nutritionals and branded generic medicines.Job SummaryWe are seeking an experienced trademark paralegal to...

  • Trademark Paralegal

    4 weeks ago


    Chicago, Illinois, United States Faegre Drinker Biddle & Reath LLP Full time

    Job Title: Trademark Paralegal - Intellectual Property SpecialistJob Summary:Faegre Drinker Biddle & Reath LLP is seeking a highly skilled Trademark Paralegal to join our Intellectual Property practice group. As a key member of our team, you will work closely with top lawyers and legal professionals to provide a full range of trademark and brand management...


  • Chicago, Illinois, United States Crowell & Moring Full time

    Job SummaryCrowell & Moring LLP is a leading international law firm with offices in the United States, Europe, MENA, and Asia. We represent clients in litigation and arbitration, regulatory and policy, intellectual property, and transactional and corporate matters.The Trademark Paralegal Specialist is assigned to specific matters, clients, projects, and/or...


  • Chicago, Illinois, United States Beacon Hill Full time

    Beacon Hill Legal is seeking a Trademark Paralegal to join their team in downtown Chicago.This is a full-time position with a hybrid work schedule (3 days in office, 2 days remote) and competitive compensation (starting at $80K+ DOE).Requirements:5+ years of trademark paralegal experienceBachelor's Degree or equivalent experienceStrong knowledge of domestic...

  • Trademark Paralegal

    4 weeks ago


    Chicago, Illinois, United States Abbott Full time

    About the RoleAbbott is a global healthcare leader seeking an experienced trademark paralegal to join our global trademark team. As a key member of our team, you will be responsible for conducting foreign and domestic trademark clearance searches, collaborating with marketing colleagues and trademark attorneys to develop brand strategies, and managing the...

  • Trademark Paralegal

    4 weeks ago


    Chicago, Illinois, United States Abbott Laboratories Full time

    About Abbott LaboratoriesAbbott Laboratories is a global healthcare leader that helps people live more fully at all stages of life. Our portfolio of life-changing technologies spans the spectrum of healthcare, with leading businesses and products in diagnostics, medical devices, nutritionals and branded generic medicines.Job SummaryWe are seeking an...

  • Trademark Paralegal

    4 weeks ago


    Chicago, Illinois, United States Abbott Full time

    About the RoleAbbott is a global healthcare leader seeking an experienced trademark paralegal to join our global trademark team. As a key member of our innovative group, you will be responsible for elevating trademark practice to best align with Abbott's cutting-edge diverse businesses.Key ResponsibilitiesConduct foreign and domestic trademark clearance...


  • Chicago, Illinois, United States Abbott Full time

    Job SummaryAbbott is a global healthcare leader that helps people live more fully at all stages of life. Our portfolio of life-changing technologies spans the spectrum of healthcare, with leading businesses and products in diagnostics, medical devices, nutritionals and branded generic medicines.Key ResponsibilitiesConduct foreign and domestic trademark...


  • Chicago, Illinois, United States Chelsea Search Group Full time

    IP Litigation Paralegal SpecialistThe Intellectual Property Litigation Paralegal Specialist will assist attorneys in all phases of the litigation process, from discovery to trial and appeals, with a focus on IP litigation. Experience working on matters before the Patent and Trial Appeal Board and the Trademark Trial and Appeal Board, as well as International...

  • Trademark Assistant

    1 month ago


    Chicago, Illinois, United States Banner Witcoff Full time

    Job Title: Legal Assistant About the Role: Banner Witcoff is a leader in intellectual property law with over 100 years of experience. We provide sound legal guidance and inventive IP solutions to power business for start-ups, Fortune 500 companies, and everything in between. As a Legal Assistant, you will be part of a dynamic team of professionals working...


  • Chicago, Illinois, United States Ice Miller Full time

    Job Summary: Ice Miller LLP is seeking a highly skilled Patent Paralegal to support attorneys and agents in our Intellectual Property group. This individual must be capable of working in a fast-paced environment with time-sensitive materials and maintaining strict confidentiality due to the nature of the position.Key Responsibilities: Assist with the...

  • Paralegal Specialist

    1 month ago


    Chicago, Illinois, United States Metropolitan Water Reclamation District of Greater Chicago Full time

    Job SummaryThe Metropolitan Water Reclamation District of Greater Chicago is seeking a highly skilled Paralegal to support the District's legal activities. As a key member of the legal team, the Paralegal will assist attorneys in preparing and implementing pre-trial discovery, drafting legal documents, and performing legal research.Key ResponsibilitiesAssist...


  • Chicago, Illinois, United States Ice Miller Full time

    Job Summary: Ice Miller LLP is seeking a highly skilled Patent Paralegal to support attorneys and agents in our Intellectual Property group. This individual must be capable of working in a fast-paced environment with time-sensitive materials and maintaining strict confidentiality due to the nature of the position.Key Responsibilities: Assist with the...


  • Chicago, Illinois, United States JLL Full time

    Job Title: Commercial Paralegal SpecialistAbout the Role:As a Commercial Paralegal Specialist at JLL, you will play a crucial role in supporting the commercial growth and managing risk for the JLL Technologies business. You will work closely with a global, regional, and local team of legal and sales professionals to drive business objectives.Key...


  • Chicago, Illinois, United States Legal Aid Chicago Full time

    Job Title: Paralegal - Public Benefits SpecialistLegal Aid Chicago is seeking a highly motivated and detail-oriented Paralegal - Public Benefits Specialist to join our team. The ideal candidate will have excellent communication and organizational skills, with a strong ability to work collaboratively with attorneys and other staff members.Job Summary:The...


  • Chicago, Illinois, United States AbbVie Full time

    Job DescriptionAbbVie is a leading biopharmaceutical company that is committed to discovering and delivering innovative medicines and solutions that solve serious health issues. We are seeking a highly skilled Paralegal to support our global Clinical R&D organization.The successful candidate will interact with attorneys in the Legal Division and R&D...