Trademark paralegal

Job Title: Trademark Paralegal
Location: Chicago

Job Description:

The Trademark Paralegal will leverage their knowledge and experience in domestic and foreign trademark prosecution to support U.S. and international trademark registration processes. This position involves managing trademark portfolios, conducting trademark clearance, overseeing U.S. and foreign trademark prosecution, and handling contentious matters. The role requires constant communication with clients and foreign counsel on trademark issues, including filing instructions, office actions, and potential conflicts. The Trademark Paralegal will also assist with infringement investigations and provide litigation support.

The successful candidate will be expected to efficiently manage all aspects of U.S. trademark prosecution, prepare necessary legal documents, and oversee execution and legalization processes. They will use trademark databases such as PATTSY, conduct preliminary searches, and support trademark litigation efforts by gathering and organizing evidence. They will be expected to quickly learn department processes and take initiative to complete tasks with minimal oversight.

Responsibilities:

• Prepare and electronically file U.S. trademark prosecution and maintenance documents with the USPTO (applications, office actions, affidavits, renewals, assignments, etc.)
• Conduct trademark searches using third-party platforms and common law databases
• Correspond with clients regarding trademark prosecution and maintenance
• Prepare and file trademark documents with WIPO, including international registration and responses to notices of irregularity
• Work with foreign counsel on prosecution and maintenance of trademarks outside the U.S.
• Prepare ownership and change of name documents related to trademarks
• Conduct due diligence on trademark portfolios
• Prepare and file customs registrations with U.S. Customs and Border Patrol
• Assist with enforcement matters, including oppositions, cancellations, and cease & desist letters
• Monitor attorney dockets and manage deadlines
• Record billable hours in line with practice and firm billing protocols
• Perform additional duties as required based on client and practice needs

Job Qualifications:

• Experience in U.S. and foreign trademark prosecution, maintenance, and renewal preferred
• Bachelor's degree in a legal-related field or Legal Assistant Certificate from an ABA-approved institution (significant experience may be considered in lieu of a degree)
• Proficient in Microsoft Word, Excel, and quick to learn other relevant software
• Strong research skills, including proficiency with trademark clearance databases and online investigations
• Experience with PATTSY (or similar docketing software), Saegis, LexisNexis, Westlaw, and related tools preferred
• Experience in trademark search and clearance, both preliminary and comprehensive
• Excellent communication skills, with the ability to interact effectively with clients, foreign associates, and vendors
• Strong organizational and analytical skills, attention to detail, and ability to multi-task in a fast-paced environment
• Ability to work independently, handle confidential information with discretion, and follow up on tasks without direct oversight
• Strong writing skills; a writing sample may be requested