Trademark Paralegal
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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
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