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Trademark Paralegal - Chicago, IL

Chicago, IL · Legal
Paralegal (Trademark) - Chicago, IL
A top-rated law firm is currently recruiting for a full-time Trademark Paralegal to be based in their 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.


  • 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 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
To Apply: Please email your resume to: cfleck@chelsearecruiters.com
Craig Fleck
Vice President
Chelsea Search Group
4376 Pacifica Way Suite 3
Oceanside, CA 92056

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