Paralegal - Trademark/Brand Protection

Position: Paralegal – Trademark/Brand Protection    

Dept./Practice Group: Intellectual Property

FLSA: Salaried-Nonexempt

Reports To: Assigned Attorneys 

Salary Range: $103,000 - $110,000 annually commensurate with experience

Hours & Locaton: 40 hours per week; Generally, 9 am - 5 pm; Chicago, IL or Remote

Job Summary: The role of the IP Trademark/Brand Protection paralegal is to assist BFKN attorneys in our dynamic IP practice working in all facets of trademark, design patent, copyright, enforcement and other brand protection areas.  This includes counseling, clearance, licensing, prosecution, business transactions involving intellectual property, maintenance, enforcement and litigation. This position is an integral part of the IP team who represents clients in a broad range of industries including fashion, cosmetics, motor vehicle, manufacturing, technology, health care, food and beverage, real estate, and financial services. Benefits include, medical, dental, vision, term life and disability coverage as well as a 401(k) plan.

Responsibilities:

•    Analyze portfolios to identify potential new application filing recommendations and other issues

•    Structure and conduct preliminary U.S. and international trademark searches

•    Analyze and report preliminary trademark search results

•    Coordinate U.S. and international full trademark search projects

•    Compile summaries of trademark search opinions

•    Coordinate U.S. and international trademark filing projects

•    Prepare and submit responses to U.S. Office Actions for trademarks and design patents

•    Work with foreign counsel on all aspects of searching, filing, prosecution, maintenance, disputes, and ownership of intellectual property rights

•    Draft correspondence to clients including summaries of issues, recommendations, and risk assessments

•    Prepare and record worldwide assignments and other post-transaction closing documents impacting intellectual property rights

•    Assist with U.S. and international oppositions and cancellations

Knowledge, Skills and Abilities:

•    8-10 years’ experience in the trademark and brand protection areas of intellectual property

•    Highly organized with strong research and analytical skills

•    Superior attention to detail

•    Must be able to delegate work and supervise such work to support team members

•    Must be proficient with relevant IP websites and databases including USPTO and WIPO, preferable Corsearch for searching and trademark watching

•    Experience with vendors such as Clarivate/CompuMark, Corsearch, etc.

•    Significant domestic and international experience including overall trademark and design portfolio management, clearance, due diligence, registration, maintenance and enforcement

•    Ability to independently oversee all aspects of U.S. and foreign trademark and design patent prosecution, maintenance and disputes

•    Ability to manage large, complex, international trademark and design patent portfolios

•    Ability to analyze new and existing portfolios to identify gap filing recommendations, ownership and other issues

•    Ability to complete electronic filings in the USPTO, including TTAP, and WIPO and to delegate preparation of such filings as appropriate

•    Ability to delegate work and supervise such work to support team members

•    Experience coordinating international full search trademark and patent design patent application filing projects including:

• Analyzing each project
• Providing recommendations
• Corresponding with clients and foreign counsel
• Analyzing and summarizing foreign associate opinions and recommendations

•    Experience with trademark docketing software, preferably CPI, including docket entry, searching, and preparing reports

•    Working knowledge of domain name registration and management

•    Experience analyzing chain of title and updating IP ownership in the U.S. and internationally

•    Experience analyzing trademark watch notices and managing watch services

•    Must be able to analyze complex trademark portfolio matters

•    Must be able to synthesize foreign associate opinions and recommendations into client correspondence

•    Familiarity with TTAB rules and procedures

•    Design patent experience a plus, particularly:

• Experience with both direct-filed and Hague-filed design patent applications
• Experience with ancillary forms, restrictions, divisionals, continuations, continuations-in-part, novelty/obviousness refusals, international practice, petitions, and Examiner contact
• Familiarity with prior art searching, ownership searching, and the like
• Understanding of drawing requirements, foreign filing licenses, information disclosure statements, application requirements, inventor requirements, and ownership considerations
• Knowledge of design patent vendors, contacts/resources, emerging trends, etc.
• Comfortable with discussing strategy and related considerations with attorneys and offering suggestions for design patent filings

•    Copyright Experience a plus

•    Experience with Social Media a plus

Working Conditions and Physical Effort: 

•    Work is normally performed in a typical office work environment 

•    May work remotely

•    Limited physical effort required and very limited exposure to physical risk

Disclaimer:

Incumbents must be able to perform the essential functions of the position satisfactorily and, if requested, reasonable accommodations will be made to enable employees with disabilities to perform the essential functions of their job, absent undue hardship.

This job description in no way states or implies that these are the only duties to which will be required in this position. The Firm reserves the right to change or assign other duties to this position (within guidelines and compliance with Federal and State Laws). Continued employment remains on an “at-will” basis