Paralegal (IP&T Trademark)

Position: Paralegal - Intellectual Property & Trademark
Locations: Chicago, New York, St. Louis, or Washington, D.C.
Salary: $100,000 - $120,000 (with potential bonus)

Our client offers a comprehensive salary and benefits package that includes medical, dental, and vision coverage, a 401(k) plan with profit sharing, short-term and long-term disability insurance, life insurance, tuition reimbursement, paid time off, holidays, and discretionary bonuses.

Overview:

Our client is seeking a full-time Trademark Paralegal to join their Intellectual Property and Trademark (IP&T) team in either Chicago, St. Louis, Washington, D.C., or New York. This role will support local IP&T practitioners as well as the national practice group and will report to the Practice Group Leader.

Key Responsibilities:

• Prepare and electronically file U.S. trademark prosecution and maintenance documents with the USPTO, including applications, office action responses, extensions, statements of use, affidavits, renewals, assignments, and powers of attorney.
• Conduct trademark screening searches using third-party platforms and perform common law searches.
• Communicate with clients regarding routine trademark prosecution and maintenance phases.
• Assist attorneys with Trademark Trial and Appeal Board (TTAB) filings, such as extensions for filing notices of opposition and consent motions.
• Prepare and file trademark documents with the World Intellectual Property Organization (WIPO), including applications for International Registration and responses to Notices of Irregularity.
• Collaborate with foreign counsel regarding the prosecution and maintenance of trademark applications/registrations outside the U.S., including notarization and legalization of documents.
• Prepare and record ownership and name change documents related to trademarks.
• Conduct due diligence on trademark portfolios and prepare customs registrations with U.S. Customs and Border Protection.
• Generate cost estimates for new filings and file copyright applications for registration.
• Assist with trademark enforcement matters, collaborating with foreign counsel regarding oppositions, cancellations, and cease-and-desist letters.
• Monitor attorney dockets and coordinate with internal personnel to manage deadlines.
• Accurately record billable hours using established practice and firm billing protocols.

Qualifications:

• A minimum of a Bachelor’s Degree is required.
• 4 to 10 years of experience in a trademark department, including at least 4 years focused on trademark prosecution; experience with copyrights is a plus.
• A strong desire to learn and grow within the field of intellectual property.
• Exceptional writing, editing, research, organizational, and analytical skills, with great attention to detail.
• Proficiency in Microsoft Excel, PowerPoint, and Word.
• Ability to manage multiple tasks efficiently under pressure.
• A strong work ethic with a willingness to work evenings and weekends when necessary.
• Professional demeanor with excellent organizational skills.
• Capability to guide and train junior team members.
• Discretion in handling confidential matters and documents.
• Ability to meet minimum billable hour requirements.
• Proficiency in Microsoft Office Suite, PDF creation tools, document management software, and timekeeping systems.