IP Trademark Paralegal
The candidate will be analyzing portfolios to identify potential new application filing recommendations and other issues. Structuring and conducting preliminary U.S. and international searches. Analyzing and reporting preliminary search results. Coordinating U.S. and international full search projects. Compiling summaries of search opinions, coordinating U.S. and international trademark filing projects. Preparing responses to U.S. Office Actions. Working with foreign counsel on all aspects of searching, filing, prosecution, maintenance, disputes, and ownership. Drafting correspondence to clients including summaries of issues, recommendations, risk assessments. Preparing and recording worldwide assignments and other post-transaction closing documents impacting trademarks. Assisting with U.S. and international oppositions and cancellations. Additional qualifications include experience with domain names, copyrights, social media. 10 years on the job experience as an IP paralegal, ideally in a law firm required. Significant domestic and international experience including overall trademark portfolio management, clearance, due diligence, registration, maintenance and enforcement required. Ability to independently oversee all aspects of U.S. and foreign trademark prosecution, maintenance and disputes required. Ability to manage large, complex, international trademark portfolios required. Ability to independently manage assigned docket dates including due date, reminder and follow-up actions in a timely manner required. Ability to analyze new and existing portfolios to identify gap filing recommendations, ownership and other issues required. Must be highly organized with strong research and analytical skills, and superior attention to detail. Ability to delegate work and supervise such work required. Strong preliminary trademark search skills, preferably via Corsearch’s online platform required. Experience coordinating international full search and trademark application filing projects, including analyzing each project, providing recommendations, corresponding with clients and foreign counsel, and analyzing and summarizing foreign associate opinions and recommendations required. Must be proficient with relevant IP websites and databases including USPTO and WIPO, preferably Corsearch for searching and trademark watching, as well as experienced with vendors such as Clarivate/CompuMark, Corsearch, etc. Ability to complete electronic filings in the USPTO, including the TTAB, and WIPO, and to delegate such filings as appropriate required. Familiarity with TTAB rules and procedures required. Experience with trademark docketing software, preferably CPI, including docket entry, searching, and preparing reports required. Working knowledge of domain name registration and management required. Experience analyzing chain of title and updating IP ownership in the U.S. and internationally required. Experience analyzing trademark watch notices and managing watch services required. Experience with social media a plus. Copyright and design patent experience a plus. Must be able to analyze complex trademark portfolio matters. Must be able to synthesize foreign associate opinions and recommendations into client correspondence. Must be able to work collaboratively with supervising attorneys and other team members. Must be proactive and highly organized. Must be flexible. Excellent communication skills with the ability to effectively communicate with clients required. The candidate will assist attorneys with all aspects of our dynamic IP practice. Should have extensive experience in all facets of trademark practice, including counseling, clearance, licensing, prosecution, business transactions involving intellectual property, maintenance, enforcement and litigation. Should have 10 years of experience in the trademark area of intellectual property with the ability to independently manage large trademark portfolios.
Barack Ferrazzano Kirschbaum & Nagelberg LLP
200 West Madison Street
Chicago, IL 60606