Position : Trademark Paralegal
Location : Chicago, IL(Hybrid)
Duration : Full time & Direct Hire
Job Summary
The Trademark Paralegal is assigned to specific matters, clients, projects and/or specified routine activities and determines and prepares appropriate work product, sometimes with minimal attorney supervision. The Trademark Paralegal has a minimum billable requirement of 1600 hours per year.
Job Responsibilities
- Conducts preliminary US searches and worldwide searches for trademark availability
- Reviews and distributes, as needed, trademark watch notices for all clients to attorneys for further review and follow up
- Conducts trademark use investigations and other due-diligence related activities
- Assists in infringement, opposition, and related proceedings, including discovery-related activities, cite checking and filing
- Prepares draft reporting letters and responses to Office Actions for attorney review
- Reviews specimens and prepares draft declarations
- Coordinates take-down notices with numerous social media platforms
- Prepares formal assignments and agreements for trademark matters and records relevant materials with the United States Patent and Trademark Office
- Prepares trademark status summary reports
- Prepares worldwide cost estimates for filing and maintenance of trademarks
- Actively participates 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
- Coordinates relationships with several vendors, and reviews agent and vendor invoices in compliance with firm’s policies and procedures
- Handles non-routine intellectual property related projects as needed
Qualifications
- 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. Requires patience, creativity and discretion
- 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
- The position requires a Bachelor’s Degree in a related field. Equivalent training and experience may substitute for education.
Experience
- 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.
