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Trademark Paralegal

  • Full Time, onsite
  • Diamond Personnel
  • Greater Chicago Area, United States of America
Salary undisclosed

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An Am Law 100 firm is seeking a Trademark Paralegal for their Chicago, St. Louis, Washington, D.C. or New York office. This position will support the local IP&T Practitioners and the national IP&T Practice Group. This position will report to the Practice Group Leader. This position will be hybrid in office 3 days, 2 days remote.

Responsibilities:

  • 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
  • Assist attorneys in TTAB filings, i.e. extensions of time to file a notice of opposition, consent motions
  • 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
  • Prepare and file copyright applications for registration
  • Assist with trademark enforcement matters including working with and corresponding foreign counsel regarding potential oppositions, cancellations and cease & desist letters