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Title : Trademark Paralegal

Location : Illinois - Chicago
Refer to Job # SZEM848058

Trademark Paralegal Duties: The candidate will be preparing and filing domestic, foreign, and WIPO trademark applications and related prosecution filing documents, such as statements of use, requests for extensions of time, maintenance declarations, declarations of use and incontestability, renewal applications, priority documents, and powers of attorney; preparing and recording assignment and change of name documentation. Managing worldwide client trademark portfolios. Assisting with strategy and correspondence for trademark enforcement abroad and online, including customs recordals and e-commerce brand protection platforms. Researching the TMEP for solutions to procedure questions. Knowledge of US and foreign rules and monitoring any changes. Assisting with the preparation of routine reporting correspondence to clients and foreign associates. Preparing foreign filing cost estimates. Compiling documentation required for foreign filings, corresponding with foreign associates on filing and prosecuting applications and renewing registrations; preparing and/or obtaining documents for legalization; reviewing all incoming correspondence from foreign associates for essential docketing and for non-substantive responses due in connection with filing of applications. Reviewing office actions and initial drafting of reporting emails to clients. Performing trademark searches and drafting findings. Preparing reports, charts, and/or lists of trademark-related information upon client or attorney request. Researching and evaluating potential specimens showing use for submission to the USPTO or foreign jurisdictions requiring a declaration of continued use. Assisting with TTAB proceedings and trademark litigation, including drafting and filing documents, maintaining pleading files and dockets, and related tasks. Assisting with registration, maintenance, and transfer of domain names and UDRP proceedings. Coordinating with attorneys and accounting department to assist with complicated billing inquiries, as needed. Proactively managing trademark prosecution dockets; monitoring and following up on dates associated with the US and foreign patent prosecution docket, including clearing dates and providing follow-up with attorneys, paralegals, clients, and foreign associates in order to provide adequate time to respond. Providing support to IP team members with special projects and overflow of routine responsibilities. Maintaining positive relations with internal clients and co-workers and contributing to the self-directed team structure to assist with overflow and specialized tasks within guidelines set by the firm. Qualifications: The candidate should have a High school diploma. Bachelor's degree is preferred. Should have 3+ years of trademark administration or paralegal experience, preferably in a law firm. Additional knowledge of patent prosecution and/or IP litigation experience is a plus. Experience with Microsoft Office Suite and Adobe Pro required. Familiarity with IPDAS and CPi docketing software is a plus. Excellent time management skills and ability to work in high-pressure environments; ability to shift priorities quickly without compromising deadlines or quality. Ability to be proactive and to identify and address problems quickly. Excellent clerical skills and knowledge of grammar, spelling, and punctuation. Exceptional attention to detail and ability to work independently. Computer proficient, intermediate, or advanced experience using Microsoft Office products such as Word, Excel, and PowerPoint. Ability to perform all essential duties.

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