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Title : Senior Trademark Paralegal

Location : Illinois - Chicago
Refer to Job # MVIC706584

Senior Trademark Paralegal The candidate will be responsible for providing paralegal support and assistance to attorneys in the area of Intellectual Property in the coordination, management and supervision of all aspects of United States Patent and Trademark Office filings, including responses, petitions, inquiries of PTO personnel, and searches. Maintains professionalism and strict confidentiality in all client and Firm matters. Client billable hour requirement: 1,700 hours annually (142 client billable hours average per month). Managing domestic and foreign prosecution for a large portfolio including recordation of assignments, renewals, offices actions and new filings. Preparing US federal and state trademark registration application documents; draft trademark goods/services specifications. Preparing, review, and oversee trademark filings to the United States Patent and Trademark Office through issuance of trademark. Preparing inquiries to and responses from the United States Patent and Trademark Office. Assisting with trademark analysis including ability to review, investigate results and summarize trademark full searches. Drafting letters to clients regarding trademark information. Utilizing on-line trademark database and conduct trademark clearance searches. Perform file organization and maintenance. Maintaining up-to-date time reports to ensure accurate client billing. Performing due diligence ownership searches on trademarks, copyrights and domain names to assist corporate department with Mergers and Equitation security agreements. The candidate should have Bachelors Degree. Paralegal certificate from an ABA accredited paralegal program is preferred. Should have5+years of experience in the Intellectual Property in a law firm environment. Legal research knowledge and ability to use law library are required. Experience with the United States Patent and Trademark Office are needed. Litigation experience is required. Knowledge and understanding of all components of domestic and foreign trademark principles, rules, and regulations with respect to filing procedures and requirements especially regarding Internet filing capabilities are desired. Knowledge of foreign trademark rules in order to prepare foreign filings highly desirable is plus. Familiar with Trademark Trial and Appeal Board (TTAB) filing requirements and be able to assist in all aspects of TTAB proceedings are asset. Computer proficient with experience and working knowledge of Westlaw and other intellectual property-related databases including Serion and Corsearch, Internet research, due diligence, Excel, Outlook and MS Word preferred. Must be proficient in trademark docketing databases and experience with Foundation IP is essential. Exhibit high degree of initiative with excellent analytical, technical, and critical-thinking skills requiring an aptitude for detail, precision, and logic in order to analyze and research intellectual property data, process information, conduct legal research and perform essential duties.

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