Trademark Paralegal

Title -Trademark Paralegal

Duration - Full Time Permanent

Location - Washington D.C., Grand Rapids, Ann Arbor, Bloomfied Hills, MI and Chicago, IL

Schedule - Hybrid

Schedule: 4 days in office for the first 6 months, then 3 days in office (Slightly negotiable for 3 days in office for a strong candidate)

RESPONSIBILITES:

· 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

· 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

· 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

· Quickly get up to speed on department processes and needs, as well as take initiative to follow-up and take necessary action.

JOB QUALIFICATIONS:

· Experienced in trademark prosecution, maintenance and renewal, both U.S. and foreign preferred.

· Bachelor's Degree in the legal industry and/or a Legal Assistant Certificate from an ABA approved institution.

· May consider significant experience in lieu of a degree.

· Proficient in Word, Excel, and an ability learn quickly how to use other applications used by the department.

· Proficient in the use of the Internet for conducting research, including a strong knowledge of trademark clearance databases, as well as trademark investigations – online and through investigations.

· Prefer experience with PATTSY (or an equivalent docketing software), Saegis, Lexis/Nexis, Westlaw, and similar research tools.

· Trademark search and clearance experience, both preliminary and comprehensive.

· High level of communication skills requiring social sensitivity and in-depth knowledge of department procedures in order to communicate effectively with staff and management within and outside the department and external contacts, including clients, foreign associates and vendors.

· Ability to independently multi-task and take ownership of work in a fast-paced environment

· Capable of following and conveying instructions effectively with a high degree of courtesy and tact including ability to independently initiate follow-up.

· Must be a problem solver, willing to work and think with independence, handle confidential information with discretion, and accept responsibility for producing work that is consistently complete, timely, effective and accurate.

· Excellent organizational and analytical skills; detail oriented. Strong writing skills (a writing sample may be requested)

Job Type: Full-time

Pay: $90,000.00 - $120,000.00 per year

Benefits:

• 401(k)
• Dental insurance
• Health insurance
• Life insurance
• Paid time off
• Vision insurance

Schedule:

• 8 hour shift

Experience:

• USPTO: 1 year (Required)

Ability to Commute:

• Chicago, IL 60654 (Required)

Ability to Relocate:

• Chicago, IL 60654: Relocate before starting work (Required)

Work Location: In person

Salary : $90,000 - $120,000