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Location : Illinois - Chicago
Refer to Job # GPZG711804
Trademark Paralegal Duties: Electronic filing of Trademark Office and Copyright Office applications, transfer and maintenance documents, and responses to refusals to register trademarks. Manage trademark docket and reminders to internal and external clients. Perform due diligence investigations, reporting and summarizing for mergers and acquisitions. Develop initial recommendations for trademark applications, opposition, cancellation and enforcement strategy. Correspond with and evaluate strategies from foreign trademark counsel related to brand protection. Assist with U.S. Customs recordations for trademarks and copyrights. Perform domain name registrations and reconcile disputes. Preliminary trademark availability searches via software. Direct communication with clients regarding updates and requests for instruction. Other tasks and projects as needed.
Qualifications: Must have 5+ years of Trademark experience. Four-year college degree in any discipline; minimum 3.3 grade point average. Background in branding, marketing, advertising, the arts, authorship or content creations is a plus. Degree or certificate in Paralegal Studies is a plus. Excellent oral and written communication skills for extensive correspondence internally and with clients, foreign counsel and PTO. Familiarity with oppositions and TTAB proceedings preferred. Knowledge of how to work with the PTO to achieve goals and resolve issues in a timely fashion. Familiarity with U.S. Customs Recordations and Copyright Office procedures preferred. Proficient with the Microsoft Office Suite (Outlook, Word, Excel, etc.). Strong research and investigative skills. Strong computer and software skills (LexisNexis, Westlaw, etc.). Excellent organizational skills with strong attention to detail and the ability to prioritize and coordinate work. Excellent verbal and written communication skills. Ability to assess and respond to underlying issues and implications. Possess strong interpersonal skills with the ability to build strong relationships. Accepts ownership of projects and is successful in driving projects, as well as daily tasks, to a successful conclusion. Ability to adjust and adapt quickly to changing situations. Ability to work with detailed information accurately and efficiently. Able to maintain confidentiality. Ability to interact with people in a manner which shows sensitivity, tact and professionalism. Exhibits clear and concise telephone and email etiquette. Must be able to work well as part of a team as well as independently. Is responsive and sensitive to internal and external deadlines. Must quickly grasp the goals, service, culture and strategy of the department, the office and the firm overall. Must conduct him/herself professionally in appearance and actions; must set a positive example for all personnel. Adheres to and serves as a role model for the firm Client Service Standards.
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