Senior Trademark Paralegal

Please send resume in WORD format should you be interested in the
following Senior Trademark Paralegal position with our law firm
client. This role can be located in Chicago, IL or Washington DC.

This is a full-time, direct-hire position with a salary dependent
on experience and location plus excellent benefits. If you are
not interested, please pass along to your colleagues as we do pay
referral fees.

Title: Senior Trademark/Senior Paralegal Specialist/Paralegal
Specialist

Department: Paralegal

Reports to: Paralegal Manager

FLSA Classification: Non-Exempt

Salary: $120K-150K/year

Location: Chicago, IL or Washington DC

**** Candidates must have large law firm experience as part of
their work history

**** Candidates must have Trademark Prosecution Paralegal
experience as part of their work history, and not solely IP
experience

Job Summary:

This position works under the direct supervision of a lawyer and
provides the lawyer substantive legal services. A lawyer may
delegate any task normally performed by a lawyer to a Paralegal
Specialist, except those tasks prohibited to a non-lawyer by
statute, court rule, administrative rule or regulation,
controlling authority, the applicable rule of professional
conduct of the jurisdiction in which the lawyer practices, or the
ABA Guidelines for the Utilization of Paralegal Services.

Responsibilities:

Trademark:

* Prepare and file foreign and domestic trademark applications,
statements of use, extensions of time, amendments to allege use,
Sections 8 & 15 declarations, and other filings;
* Draft communications with clients and foreign associates;
* Preliminary trademark availability searching
* Review office actions and summarize issues for attorneys;
* Perform internal trademark searches and/or initial review of
outside vendor search reports and preparing charts and draft
findings;
* Draft filing instructions for trademark applications;
* Reporting deadlines to docketing and docket clearance;
* Client communications, including reporting actions, deadlines
and providing accurate charts of client’s prosecution matters;
* Preparing agendas for monthly client calls;
* Make preliminary evaluations regarding potential specimens
showing use for submission.
* Assist with TTAB proceedings and trademark litigation,
including drafting and filing of documents, maintaining pleadings
files and docket, searching for third party marks or evidence of
use and related tasks
* Copyright experience or willingness to learn.

GENERAL:

* Drafts, analyzes, and prepares legal documents for a
supervising lawyer or supervising paralegal[1].
* Coordinates legal projects and communicates legal information
for a supervising lawyer or supervising paralegal.
* Prepare draft communications for a supervising lawyer or
supervising paralegal.
* Collects, evaluates, and summarizes relevant facts and legal
concepts for a supervising lawyer or supervising paralegal.
* Attends client meetings, coordination meetings, and legal
proceedings with a supervising lawyer or supervising paralegal.
* Provides legal project management for a legal matter for a
supervising lawyer or supervising paralegal.
* Supervises Project Assistants, Paralegals and Senior Paralegals
on assigned tasks.
* Maintains notary license in local jurisdiction.
* Follows all supervising lawyer or supervising paralegal
instructions.

OTHER DUTIES AND RESPONSIBILITIES:

* Maintains accurate and appropriate time records regarding hours
spent working for clients, working for the Firm, and working on
administrative tasks.
* Meets all time entry and timesheet deadlines specified by the
Firm, the Paralegal Department, and the Accounting Department.
* Bills a minimum of 1,536 creditable hours each performance
evaluation year that begins April 1 and ends March 31 of which a
minimum of 1,416 of those hours are client billable hours.
* Limits approved pro bono hours and approved firm representation
hours to a maximum of 120 total hours during each performance
evaluation year.
* Works a predictable schedule, and also provides flexibility in
daily schedule to meet Firm’s needs during periods of heavy
workload.
* Timely notifies both supervising lawyers, supervising
paralegals, and the Paralegal Manager of any time out of the
office during normal work hours.
* Reports the receipt of non-billable work to the Paralegal
Manager upon receipt.
* Avoids overtime for non-billable assignments.
* Contacts supervising lawyers, supervising paralegals and
Paralegal Manager when available for new assignments.
* Accepts accountability and responsibility for all work
assignments.
* Adheres to The National Federation of Paralegal Associations,
Inc.’s “Model Code of Ethics and Professional Responsibility.”
* Attends relevant legal education to continuously improve legal
skills.

EDUCATION & EXPERIENCE:

Bachelor’s degree or Paralegal Certification from ABA approved
program required.

In lieu of degree, 13+ years of experience required.

MINIMUM QUALIFICATIONS:

Knowledge/Skills/Abilities:

* Excellent verbal and written communication skills.
* Understanding of legal processes and practice-group specific
procedures.
* Excellent interpersonal, team, and customer service skills.
* Excellent attention to detail.
* Excellent organizational and time management skills with a
proven ability to meet deadlines.
* Strong analytical and problem-solving skills.
* Ability to function well in a high-paced, and at times,
stressful environment.
* Ability to maintain confidentiality, and to exercise discretion
and good judgment.
* Proficient with Microsoft Office Suite and practice-group
specific software.

Job Location