Trademark Paralegal #1998648

3 weeks ago

Chicago, United States AMS Staffing Inc. Full time

Please send resume in WORD format should you be interested in the following Trademark Paralegal position located in Chicago, St. Louis, Washington, D.C. or New York. This is a full-time, direct-hire position with a salary between 80-110K plus awesome benefits. If you are not interested, please pass along to your colleagues as we do pay referral fees.


Location: Chicago, St. Louis, Washington, D.C. or New York (candidates must live within a commutable distance)

Salary: 90-120K depending on location and experience

Hybrid: 3 days in office/2 days remote

Degree required: YES

Minimum billable hour requirement: 1,500

Weekly hours: 37.5


Our client is seeking 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 Manager, Paralegal Services and/or the Paralegal Services Administrator.


Responsibilities:

  • 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
  • Perform other duties as necessary to fully meet the requirements of the position based on practice/client needs


Experience & 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

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