Paralegal - Trademark

Summary

The Paralegal supports lawyers and other legal personnel in the Firm’s Technology and Life Sciences practice group.

Duties and Responsibilities

• Manage domestic and foreign prosecution for multiple clients, including drafting trademark/service mark applications, affidavits of use, maintenance and renewal documentation and correspondence to clients.
• Drafts responses to office actions issued by the USPTO.
• Communicates with and manages foreign trademark counsel and agents regarding registration, maintenance and enforcement matters.
• Monitors and maintains trademark docket for due dates for responses, maintenance filings, renewals, oppositions, cancellations and office actions.
• Orders and analyzes trademark searches and assists attorneys in compiling results from searches to provide clearance analysis.
• Conducts in-house trademark searches and assists attorneys in compiling results from searches to provide clearance analysis.
• Handles all types of filings at the USPTO and Trademark Trial and Appeal Board in order to prosecute, maintain, and enforce trademarks.
• Assists attorneys in preparing cost estimates for trademark clearances, prosecution, recordation with the USPTO and Copyright Office, and maintenance.
• Performs due diligence ownership searches on trademarks, copyrights, and domain names in connection with corporate and finance transactions, including analyzing chain of title information and preparation of appropriate assignments, IP security agreements, and releases.
• Orders file wrappers, copies of recorded assignments and security interests, and title documents recorded at government offices.
• Reviews executed IP assignments to ensure they are properly executed, notarized, stamped, witnessed, etc.
• Prepares recordation cover sheets or electronic fillings for documents to be recorded at USPTO or Copyright office.
• Arranges for legalization (by consulate or Apostille) of assignments for recording foreign trademark and patent offices.
• Prepares draft cease and desist demands and required follow-up.
• Reviews trademark watch notices, conducts initial investigation of potentially problematic references, and assists with resulting enforcement actions.
• Prepares draft of UDRP complaints and assists with filling and associated actions.
• Prepares draft copyright applications and assists with filing with Copyright Office.
• Prepares draft DMCA take down requests.
• Mentors and trains junior Paralegals as appropriate.
• Performs other work related duties as assigned or as judgment or necessity dictates.

Qualifications

To perform this job successfully, an individual must be able to perform the Duties and Responsibilities (Duties) above satisfactorily and meet the requirements below.  The requirements listed below are representative of the minimum knowledge, skill, and/or ability required.  Reasonable accommodations will be made to enable individuals with disabilities to perform the essential functions of the job.  If you need such an accommodation, please email staffrecruiting@sidley.com (current employees should contact Human Resources). 

Education and/or Experience:

Required:

• Minimum 5 years of focus on Intellectual Property/Trademark work, including knowledge of USPTO and TTAB rules and procedure.
• Familiarity with international trademark filing procedures and conducting due diligence reviews of Intellectual Property.
• Adept in drafting correspondence and diligence memoranda, and preparing of worldwide assignments and recordings.

Preferred:

• Bachelor’s degree.

Other Skills and Abilities:

In addition to the above, the following may also be required of the successful candidate:

• Excellent research and communication skills.
• Strong analytical, problem solving, and organizational skills.
• The use of good judgment and good interpersonal communication skills.
• Works harmoniously and effectively with others as part of a team.
• A self-starter who desires to show ownership and commitment to the job.
• Exercises confidentiality and discretion.

Sidley Austin LLP is an Equal Opportunity Employer