Trademark Paralegal Specialist

2 days ago

Chicago, Illinois, United States Crowell & Moring Full time
Job Title: Trademark Paralegal

Crowell & Moring LLP is a leading international law firm with a strong presence in the United States, Europe, MENA, and Asia. We are seeking a highly skilled Trademark Paralegal to join our team.

Job Summary

The Trademark Paralegal will be responsible for conducting preliminary US searches and worldwide searches for trademark availability, reviewing and distributing trademark watch notices, and conducting trademark use investigations. The successful candidate will also assist in infringement, opposition, and related proceedings, including discovery-related activities, cite checking, and filing.

Key Responsibilities
  • Conduct preliminary US searches and worldwide searches for trademark availability
  • Review and distribute trademark watch notices for all 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 numerous 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
  • Actively participate in risk management by meeting all internal and statutory due dates, careful review of file histories and client instructions, accurate preparation of documents, file maintenance/handling procedures, timeliness/responsiveness, and overall quality of service
  • Coordinate relationships with several vendors, and review agent and vendor invoices in compliance with firm's policies and procedures
  • Handle non-routine intellectual property related projects as needed
Requirements
  • General knowledge of domestic and international trademark prosecution law
  • Demonstrated ability to prepare a heavy volume of accurate and complete documents that meet US Trademark Office requirements
  • Demonstrated 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
  • Demonstrated 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
  • Demonstrated ability to conduct legal research regarding the rules and procedures for US trademark law
  • Demonstrated ability to organize and prioritize work in a dynamic and complex environment to meet deadlines and daily requirements
  • Demonstrated ability to communicate persuasively, both orally and in writing
  • Ability to analyze and interpret information from a variety of sources, apply critical and creative thinking to draw conclusions or develop solutions to complex problems
  • Proven leadership capabilities in intellectual property related areas
  • Ability to provide quality client service to both internal and external contacts, regarding matters of a complex nature
  • Must possess the interpersonal skills necessary to communicate information with tact and courtesy
  • Follow instructions effectively from a diverse group of clients, attorneys, and staff
  • Flexibility regarding work schedule and availability for overtime as requested to accommodate client and attorney business needs
  • Demonstrated 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. The position requires a minimum of three (3) years of increasingly responsible, directly related experience during which knowledge, skills, and abilities applicable to the position were demonstrated.

Benefits

Crowell & Moring LLP offers a competitive compensation and comprehensive benefits package. Our benefits include 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.

EOE m/f/d/v
Crowell & Moring LLP participates in the E-Verify program.

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