Trademark Paralegal - Chicago

Greer, Burns & Crain, Ltd.; Chicago (IL); Hybrid; USD 60,000 - 85,000; Full time

Job summary

Greer, Burns & Crain, Ltd. seeks an experienced Trademark Paralegal to join its Chicago trademark group. The role focuses on trademark prosecution, USPTO rules, and international filings, with emphasis on accuracy and client communication.

At GBC you will support attorneys in filings, searches, docket management, and coordination with foreign counsel. The firm emphasizes work-life balance and operates on a hybrid schedule: three days in the office, two days at home in a collaborative IP team

Qualifications

• Experience in trademark prosecution and USPTO rules.
• Familiarity with international trademark filing.
• Excellent communication, analytical, and organizational skills.

Responsibilities

• Communicate with clients on US and foreign trademark matters.
• Order searches and perform in-house clearance analysis.
• Assist with USPTO and TTAB filings for prosecution and maintenance.
• Draft cost estimates for clearance, prosecution, and maintenance.
• Prepare assignments and maintenance documents.
• Prepare recordation sheets for USPTO filings.
• Arrange legalization of assignments for foreign offices.
• Monitor docket for due dates and renewals.
• Draft trademark/service mark applications, affidavits of use, maintenance and renewal filings.
• Assist with responses to trademark office actions.
• Coordinate with foreign counsel and agents.

Skills

Trademark prosecution

USPTO rules

International filing

Communication

Analytical

Organizational

Job description

GBC is seeking an experienced Trademark Paralegal to join its trademark group in Chicago.Experience with trademark prosecution, including knowledge of USPTO rules and procedure and familiarity with international trademark filing are essential. Additional qualifications include excellent communication, analytical, and organizational skills.

Essential Functions

Trademark Paralegal will be responsible for the following tasks:

• Communicate with firm clients regarding US and foreign trademark registration and maintenance matters
• Order comprehensive trademark searches and perform in-house trademark searches to assist attorneys in providing clearance analysis
• Assist with all types of filings at the USPTO and Trademark Trial and Appeal Board in order to prosecute, maintain, and enforce trademarks
• Assist attorneys in preparing cost estimates for trademark clearance, prosecution, and maintenance
• Analyze chain of title information for trademarks and prepare appropriate assignments and maintenance documents
• Prepare recordation cover sheets or electronic filings for documents to be recorded at USPTO
• Arrange for legalization (by consulate or by Apostille) of assignments for recording in foreign trademark offices
• Monitor and maintain trademark prosecution docket for due dates for responses, maintenance filings, renewals, oppositions, and cancellations
• Draft trademark/service mark applications, affidavits of use, maintenance and renewal filings
• Assist attorneys with reporting, preparing and filing responses to trademark office actions
• Communicate with and manage foreign trademark counsel and agents regarding registration and maintenance matters

ABOUT THE ORGANIZATION

GBC is a full-service intellectual property law firm with an established team of professionals handling IP litigation, prosecution, and client counseling.GBC focuses on fostering a congenial work atmosphere and places strong emphasis on maintaining work-life balance for everyone at the firm.We use a hybrid work week where employees work 3 days in the office and 2 days at home. Come join our top-rated IP team!