Paralegal (Trademark)
Chicago, IL, US
Dentons US LLP is currently recruiting for a full-time Trademark Paralegal to be based in our Chicago office. This position will support the local IP&T Practitioners and the national IP&T Practice Group. 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
- Perform other duties as necessary to fully meet the requirements of the position based on practice/client needs
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
- Passionate about learning new skills and intellectual property
- Exceptional writing, editing, research, organizational, and analytical skills and attention to detail
- Expert in Microsoft Excel, PowerPoint, and Word
- Ability to work well under pressure and handle multiple, simultaneous tasks efficiently
- Strong work ethic, including willingness to work evenings and weekends as needed
Dentons offers a competitive salary and benefits package.
Dentons US LLP is an Equal Opportunity Employer of Individuals with Disabilities and Protected Veterans. We are an Affirmative Action Employer. Pursuant to local ordinances, we will consider for employment qualified applicants with arrest and conviction records.
About Dentons
Dentons is the world's largest law firm, connecting talent to the world's challenges and opportunities in more than 75 countries. Dentons' legal and business solutions benefit from deep roots in our communities and award-winning advancements in client service, including Nextlaw, Dentons’ innovation and strategic advisory services. Dentons' polycentric and purpose-driven approach, commitment to inclusion and diversity, and world-class talent challenge the status quo to advance client and community interests in the New Dynamic. www.dentons.com
Nearest Major Market: Chicago