Trademark Paralegal

$80,000 - $95,000/Yr

Honigman - Chicago, IL

Full-time - Mid Level

Remote - Chicago, IL

251-500 employees

Professional, Scientific, and Technical Services

About the position

Honigman is a premier business law firm based in Michigan with an international practice, recognized as one of the 101 Best and Brightest Places to Work. We are currently seeking an experienced Trademark Paralegal to join our team in Chicago, IL, or other locations including Ann Arbor, Bloomfield Hills, or Washington D.C. The ideal candidate will have a strong understanding of various domestic and foreign trademark prosecution matters and will be responsible for coordinating and assisting with U.S. and foreign trademark registration efforts. This role involves managing trademark portfolios, conducting trademark clearance, and handling both U.S. and foreign trademark prosecution and contentious matters. The Trademark Paralegal will engage in multi-jurisdictional filing programs and maintain constant communication with clients and foreign counsel regarding clearance, filing instructions, office actions, and potential conflicts. The responsibilities of the Trademark Paralegal include preparing and filing U.S. trademark prosecution and maintenance documents electronically with the USPTO, conducting trademark screening searches, and corresponding with clients regarding routine phases of trademark prosecution. The paralegal will also prepare and file trademark documents with WIPO, work with foreign counsel on trademark applications and registrations outside the U.S., and assist with trademark enforcement matters. The role requires proficiency in various computer software applications to conduct and analyze trademark searches and assist with comprehensive investigations. The Trademark Paralegal will also provide litigation support to in-house trademark attorneys and maintain accurate records of billable hours. To succeed in this role, the candidate must be experienced in trademark prosecution, maintenance, and renewal, possess a Bachelor's Degree in the legal field or a Legal Assistant Certificate from an ABA-approved institution, and demonstrate proficiency in Word, Excel, and other relevant applications. Strong communication skills, the ability to multi-task, and excellent organizational and analytical skills are essential. The position offers a competitive salary and benefits package, including health insurance, dental insurance, life insurance, and a 401(k) plan with matching contributions.

Responsibilities

• Prepare and file U.S. trademark prosecution and maintenance documents electronically with the USPTO including applications, office action responses, extensions of time, statements of use, affidavits, renewals, assignments, and powers of attorney.
• Conduct trademark screening searches using third-party platforms and common law searches.
• Correspond with clients regarding routine phases of trademark prosecution and maintenance matters.
• Prepare and file trademark documents with WIPO including 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.
• 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.
• Quickly get up to speed on department processes and needs, as well as take initiative to follow-up and take necessary action.

Requirements

• Experienced in trademark prosecution, maintenance, and renewal, both U.S. and foreign preferred.
• Bachelor's Degree in the legal industry and/or a Legal Assistant Certificate from an ABA approved institution. May consider significant experience in lieu of a degree.
• Proficient in Word, Excel, and an ability to learn quickly how to use other applications used by the department.
• Proficient in the use of the Internet for conducting research, including a strong knowledge of trademark clearance databases, as well as trademark investigations - online and through investigations.
• Prefer experience with PATTSY (or an equivalent docketing software), Saegis, Lexis/Nexis, Westlaw, and similar research tools.
• Trademark search and clearance experience, both preliminary and comprehensive.
• High level of communication skills requiring social sensitivity and in-depth knowledge of department procedures in order to communicate effectively with staff and management within and outside the department and external contacts, including clients, foreign associates, and vendors.
• Ability to independently multi-task and take ownership of work in a fast-paced environment.
• Capable of following and conveying instructions effectively with a high degree of courtesy and tact including ability to independently initiate follow-up.
• Must be a problem solver, willing to work and think with independence, handle confidential information with discretion, and accept responsibility for producing work that is consistently complete, timely, effective, and accurate.
• Excellent organizational and analytical skills; detail-oriented. Strong writing skills (a writing sample may be requested).

Benefits

• 401(k)
• 401(k) matching
• Dental insurance
• Health insurance
• Health savings account
• Life insurance
• Paid time off
• Parental leave
• Referral program
• Tuition reimbursement
• Vision insurance