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Trademark Paralegal - Chicago, IL

Chicago, IL · Legal

Paralegal (Trademark - Chicago)
•    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:
•    Attainment of at least a Bachelor's Degree is required
•    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
•    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
•    Professional demeanor, attention to detail, and great organizational skills are essential
•    Ability to provide direction and training to junior team members
•    Ability to maintain discretion and privacy with confidential matters and documents
•    Ability to meet minimum billable hourly requirement 

      To Apply: Please email your resume to: cfleck@chelsearecruiters.com

Craig Fleck
Vice President
Chelsea Search Group
1777 Laurelwood Way
Oceanside, CA 92056

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