Trademark Paralegal

  • Full Time
  • ,
  • Posted 2 weeks ago

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: St. Louis, Chicago, 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


* 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
* Ability to maintain discretion and privacy with confidential
matters and documents
* Ability to meet minimum billable hourly requirement

Job Location