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Trademark Paralegal at Insight Global
Insight Global
Full-Time
Chicago, IL, US
Not defined
26 Dec → 25 Jan
Expired
Job Description
Our client is currently recruiting for a full-time Trademark Paralegal to be based in our Chicago office. This position will report to the Manager, Paralegal Services and the Paralegal Services Administrator.
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
• Assist with monitoring attorney dockets and working with internal personnel to manage deadlines
• Record billable hours timely and accurately utilizing practice/firm billing protocols
Experience & Qualifications
• 4 to 10 years working in a trademark department with at least 4 years of trademark prosecution related duties; experience with copyrights would be a plus
• Excellent academic credentials and attainment of at least a Bachelor's Degree required
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
• Assist with monitoring attorney dockets and working with internal personnel to manage deadlines
• Record billable hours timely and accurately utilizing practice/firm billing protocols
Experience & Qualifications
• 4 to 10 years working in a trademark department with at least 4 years of trademark prosecution related duties; experience with copyrights would be a plus
• Excellent academic credentials and attainment of at least a Bachelor's Degree required
Job 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
- 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
Requirements / Qualifications
-
Excellent academic credentials and attainment of at least a Bachelor's Degree required
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