Trademark Paralegal job in Chicago, IL| Recruit Arrow
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Trademark Paralegal
Location : Illinois, Chicago
Refer job # UUEP340333
Job Responsibilities and Requirements: Essential Job Functions Order searches on a company's IP holdings (registered trademarks, patents, registered copyrights, domain names) and IP-related litigation Conduct additional searches on a company's IP holdings on US Patent and Trademark Office (USPTO) and U.S. Copyright Office website databases, foreign IP office website databases, and the SAEGIS trademark database Facilitate filings and monitor proceedings in USPTO and Trademark Trial and Appeal Board matters Discuss and develop search strategies to limit costs and/or find relevant IP in a carve-out situation Assist attorneys in preparing cost estimates for running IP ownership searches and for recording IP assignments Review information memoranda and company website(s) for company background and IP information/usage Research company background on the internet Analyze IP search results Analyze chain of title information for trademarks, patents and copyrights (global) Create schedules of company-owned IP Draft memoranda summarizing IP search results and discuss issues relating to a company's IP portfolio Assist attorneys in reviewing data room materials for documentation regarding registered trademarks, patents, copyrights and domain names Order file wrappers, copies of recorded assignments and security interests, and title documents recorded at government offices Contact foreign associates to run IP ownership searches in their respective countries Compare company disclosure schedules against K&E schedules and summarize discrepancies Draft IP assignments and IP security agreements and releases Review executed IP assignments to ensure they are properly executed, notarized, stamped, witnessed, etc. Prepare recordation cover sheets or electronic filings for documents to be recorded at USPTO or Copyright Office Record documents at the USPTO or Copyright Office Arrange for legalization (by consulate or by Apostille) of assignments for recording in foreign trademark and patent offices Draft instruction letters to foreign associates regarding recording assignments in their countries Correspond with foreign associates and communicate with seller's and buyer's IP counsel or in-house contact to obtain necessary documents and information for recording assignments Maintain status chart of international recordings Maintain a network of foreign associate contacts Keep client apprised of status of recording process and forward filing receipts and notices of recordation to client or client IP counsel Participate in conference calls regarding information about registered IP. Monitor and maintain trademark prosecution docket for due dates for responses, maintenance filings, renewals, oppositions and cancellations Draft trademark/service mark applications, affidavits of use, maintenance and renewal filings, and assignment agreements Draft responses to trademark examining attorney's official action Research Domestic and International trademark laws and procedure Prepare cost estimates for domestic and foreign trademark filings Communicate with foreign trademark counsel and agents regarding registration and maintenance matters Monitor and maintain trademark prosecution docket for due dates for responses, maintenance filings, renewals, oppositions and cancellations Qualifications & Requirements Education, Work Experience, Skills A Paralegal professional with 6 or more years of experience in Intellectual Property transactional work, including knowledge of USPTO and TTAB rules and procedure, familiarity with international trademark filing procedures, conducting due diligence reviews of intellectual property, drafting correspondence and diligence memoranda, preparing of worldwide assignments and post-closing recordings, and preparation of intellectual property schedules for corporate and secured lending transactions. Experience working in a large law firm. Technologies/Software Microsoft Outlook, Word, PowerPoint, Excel, SAEGIS and CPi Docketing. Certificates, Licensures, Registrations Paralegal certificate preferred, but not required. Bachelor's degree preferred, but not required.
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