Intellectual Property Trademark Paralegal

Considine Search; Chicago, Phoenix (IL, AZ); On-site; USD 115,000 - 135,000; Full time

Job summary

Considine Search is seeking an Intellectual Property Trademark Paralegal to support a national law firm's Trademark, Copyright & Branding Practice Group. Preferred locations include Chicago, Phoenix or Kansas City, with Chicago as a primary location.

You will manage domestic and international trademark portfolios, conduct searches, prepare filings with USPTO and WIPO, handle TTAB proceedings, and assist with copyright filings and related ownership transfers.

Qualifications

• Knowledge of USPTO, WIPO and international trademark rules and procedures.
• Proficient filing with USPTO and WIPO.
• Understanding IP docket and deadlines and maintaining Secondary Docket.
• Strong attention to detail, communication and interpersonal skills.

Responsibilities

• Manage domestic and foreign trademark portfolios for assigned clients.
• Conduct and analyze trademark searches, maintenance reminders and prosecution tasks.
• Prepare and file trademark and copyright applications and related documents.
• Coordinate with foreign associates on national/international filings and renewals.
• Prepare TTAB proceedings and coordinate ownership transfers.

Skills

Trademark rules

IP docket

Attention to detail

MS Office

Communication skills

Project prioritization

Education

Paralegal Certificate

Tools

CPi software

Docketing systems

Job description

Chicago, IL or Kansas City, MO or Phoenix, AZ

Summary

A leading national law firm is seeking an Intellectual Property Trademark Paralegal supporting our Trademark, Copyright & Branding Practice Group. This role's preferred locations include Phoenix, Kansas City or Chicago.

Responsibilities

• Manage domestic and foreign trademark portfolios for assigned clients
• Conduct and analyze trademark searches, maintenance reminders and trademark prosecution tasks with client and team
• Review, prepare, and file trademark applications and supporting documentation with the U.S. Patent and Trademark Office and/or WIPO, as well as manage international trademark filing requests and other documents for various countries
• Prepare and file TTAB proceedings
• Prepare trademark assignments, record ownership transfers with USPTO and WIPO, coordinate ownership transfer recordation with foreign associates
• Prepare and file international applications, irregularity responses, subsequent designations, and WIPO renewals
• Correspond with foreign associates to file national trademark applications, provisional refusal responses, renewals, oppositions/cancellations, and other matters related to foreign trademark prosecution/enforcement
• Prepare and file state trademark applications and renewals
• Prepare and file copyright applications and record ownership transfer and security agreements
• Domain name registration and maintenance
• Review, summarize, and prepare correspondence to clients reporting notices received from foreign associates, USPTO, WIPO, TTAB, and Copyright Office
• Prepare, maintain, and update reports for clients regarding status of applications and trademarks, as well as update client dockets and sending reminders to attorneys, international counsel, and clients as needed
• Exceptional verbal and written skills with clients, internal and external counsel, USPTO personnel and vendors, as well as administrative and management skills to coordinate project management and handle substantive tasks for multiple, high-tech IP cases and/or portfolios
• Effectively set priorities, meet deadlines, and manage multiple projects, including preparation and maintenance of internal docket reports, charts, and meeting agendas
• Responsible for case and file management, including uploading communications and documents to docketing and DMS systems, as well as maintaining and updating files and client portals and attending any status meetings
• Conduct IP due diligence
• Review and report watch notices
• Assist with special projects, including adverse matters, demand letters, customs recordation, and UDRP actions

Skills

• Knowledge of USPTO, WIPO, and international trademark rules and procedures
• Proficient in filing with U.S. Patent and Trademark Office and WIPO
• Proficient in understanding IP docket and deadlines and maintaining Secondary Docket
• Strong attention to detail, communication, and interpersonal skills
• Strong organizational skills and ability to prioritize multiple projects
• Proficient in Microsoft programs (Word, Excel, PowerPoint, Outlook, Adobe)

Requirements

• 5+ years IP experience, supporting large trademark portfolios
• Docketing knowledge and experience, with CPi software preferred
• Paralegal Certificate

Compensation

$115,000.00-$135,000.00, plus overtime