IP Trademark Paralegal

4 weeks ago

Chicago, United States Powerwell Full time
Job DescriptionJob Description

Powerwell, a division of Quantam, is a leading recruitment firm dedicated to helping clients discover top talent. We are currently recruiting for an experienced IP Trademark Paralegal for our client, a premier business law firm.

Job Description: The Trademark Paralegal will utilize their strong knowledge of domestic and foreign trademark prosecution to coordinate and assist with U.S. and foreign trademark registration efforts. Responsibilities include managing trademark portfolios, conducting trademark clearance, handling U.S. and foreign trademark prosecution, and managing contentious matters. The role involves multi-jurisdictional filing programs, constant communication with clients and foreign counsel regarding clearance, filing instructions, office actions, potential conflicts, and other prosecution matters. The paralegal will use appropriate software to conduct preliminary searches, analyze results, assist with comprehensive searches, and handle all aspects of U.S. trademark prosecution. Additional duties include preparing assignments of trademark registrations and applications, overseeing execution and legalization of documents, providing litigation support, entering and updating data in the trademark database (PATTSY), and generating reports.

Locations: This role can be based in any of the following offices:

  • Ann Arbor, MI
  • Bloomfield Hills, MI
  • Chicago, IL
  • Washington, D.C.

Work Arrangement:

  • Hybrid work model: 4 days in the office for the first 6 months, transitioning to 3 days in the office and 2 days at home as per firm policy.

Responsibilities:

  • Prepare and file U.S. trademark prosecution and maintenance documents electronically with the USPTO.
  • Conduct trademark screening searches using third-party platforms and common law searches.
  • Correspond with clients regarding trademark prosecution and maintenance matters.
  • Prepare and file trademark documents with WIPO.
  • Work with foreign counsel on prosecution and maintenance of trademark applications/registrations outside the U.S.
  • 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.
  • Assist with trademark enforcement matters, including oppositions, cancellations, and cease & desist letters.
  • Monitor attorney dockets and manage deadlines with internal personnel.
  • Record billable hours accurately.
  • Perform other duties as necessary to meet practice/client needs.

Qualifications:

  • Experience in trademark prosecution, maintenance, and renewal, both U.S. and foreign preferred.
  • Bachelor's Degree in the legal industry and/or a Legal Assistant Certificate from an ABA-approved institution (significant experience may be considered in lieu of a degree).
  • Proficient in Word, Excel, and able to learn department-specific applications quickly.
  • Strong knowledge of the Internet for research, including trademark clearance databases and investigation tools.
  • Prefer experience with PATTSY (or equivalent docketing software), Saegis, Lexis/Nexis, Westlaw, and similar research tools.
  • Experience in trademark search and clearance, both preliminary and comprehensive.
  • High level of communication skills, including social sensitivity and in-depth knowledge of department procedures.
  • Ability to independently multi-task and take ownership of work in a fast-paced environment.
  • Capable of conveying instructions effectively with a high degree of courtesy and tact, including independent follow-up.
  • Problem solver with the ability to handle confidential information with discretion.
  • Excellent organizational, analytical, and writing skills (a writing sample may be requested).
Company DescriptionPowerwell is a leading recruitment firm helping our clients discover top talent.Company DescriptionPowerwell is a leading recruitment firm helping our clients discover top talent.

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