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Trademark Paralegal

Katten Muchin Rosenman LLP

Chicago, Illinois 60661
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Full Time
  • IP
Katten Muchin Rosenman LLP
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Job Details

Trademark Paralegal

The experienced Trademark Paralegal is responsible for providing paralegal support and assistance to attorneys in the area of Intellectual Property in the coordination, management, and supervision of all aspects of United States Patent and Trademark Office filings, including responses, petitions, inquiries of PTO personnel, and searches. This position requires heavy client contact. Maintains professionalism and strict confidentiality in all client and Firm matters.

ESSENTIAL DUTIES AND RESPONSIBILITIES • Client billable hour requirement: 1,700 hours annually (142 client billable hours average per month).

•Manage domestic and foreign prosecution for a large portfolio including recordation of assignments, renewals, offices’ actions, and new filings. • Prepare US federal and state trademark registration application documents; draft trademark goods/services specifications. • Prepare, review, and oversee trademark filings to the United States Patent and Trademark Office through issuance of trademark • Prepare inquiries to and responses from the United States Patent and Trademark Office. • Assist with trademark analysis including ability to review, investigate results and summarize trademark full searches. • Draft letters to clients regarding trademark information. • Utilize on-line trademark database and conduct trademark clearance searches. • Perform file organization and maintenance. • Maintain up-to-date time reports to ensure accurate client billing. • Perform due diligence ownership searches on trademarks, copyrights and domain names to assist corporate department with M&As, security agreements, etc.



• Bachelor’s degree and five or more years progressive work experience in the intellectual property area preferably in a law firm environment; or equivalent combination of education and experience. Legal research knowledge and ability to use law library are required. Paralegal certificate from an ABA accredited paralegal program a plus.

• Knowledge and experience working with the United States Patent and Trademark Office. Applicable knowledge and understanding of all components of domestic and foreign trademark principles, rules, and regulations with respect to filing procedures and requirements especially regarding Internet filing capabilities. Knowledge of foreign trademark rules in order to prepare foreign filings highly desirable.

• Must be familiar with Trademark Trial and Appeal Board (TTAB) filing requirements and be able to assist in all aspects of TTAB proceedings. Litigation experience a plus.

• Computer proficient with experience and working knowledge of Westlaw and other intellectual property-related databases including Serion and Corsearch, Internet research, due diligence, Excel, Outlook, and MS Word preferred. Must be proficient in trademark docketing databases and experience with Foundation IP is a plus.

• Exhibit high degree of initiative with excellent analytical, technical, and critical-thinking skills requiring an aptitude for detail, precision, and logic in order to analyze and research intellectual property data, process information, conduct legal research, and perform essential duties.

• Excellent organizational skills including record keeping, data collection, and system information.

• Dependable team player who works collaboratively and cooperatively with others in a team-oriented environment.

• Ability to act independently and make decisions within scope of the position’s responsibilities. • Ability to organize, prioritize, and oversee numerous tasks from inception to completion, and ensure work is completed within strict deadlines.

• Ability to and manage multiple priorities simultaneously in a fast-paced, deadline-driven, detail-oriented work environment, and adapt to changes in workflow. Proactive with excellent troubleshooting, problem resolution, and follow-through skills.

We offer an outstanding benefit package which includes: medical/dental, 401k with employer contribution; transportation fringe benefit program; back-up care option; generous paid time off policy; and long-term and short-term disability policies.

Katten Muchin Rosenman LLP is an Equal Opportunity Employer/AA-M/F/SO/Disability/Veteran.

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