Trademark Paralegal

Overview

This position is for an experienced Trademark Paralegal to join the Intellectual Property–Trademark team in a fast-paced, deadline-driven environment. The role is based in the Chicago or Dallas office, on a remote basis, and reports to the Co-Chair of the Office IP Department.

Responsibilities

• Manage a full docket of trademark-related deadlines, send timely reminders to clients and attorneys, and ensure deadlines are handled
• Conduct in-house trademark screening searches using TESS, SAEGIS, Corsearch, and WIPO Global Brand Database
• Prepare and file U.S. trademark applications, renewal applications, non-substantive office action responses, use declarations, extensions of time, and other USPTO filings
• Prepare and file international applications and extensions of international registrations with the World Intellectual Property Office (WIPO)
• File Uniform Domain Name Dispute Resolution Policy (UDRP) complaints with the Forum and WIPO
• Record documents such as assignments, name changes, and lien releases with the USPTO’s Assignment Recordation Branch
• File documents with the Trademark Trial and Appeal Board and prepare non-substantive procedural filings
• Communicate professionally and accurately with clients to collect information and instructions for trademark searches and filings
• Instruct and supervise trademark prosecution and enforcement matters handled by foreign law firms, and coordinate the preparation, execution, notarization, legalization, and apostille of documents filed with international trademark offices
• Investigate infringing uses of trademarks
• Intake client requests for searches and filings and coordinate attorney handling of matters
• Create customized trademark record reports for clients
• Support client development activities

Requirements

Skills & Competencies

• Broad understanding of the USPTO’s Trademark Electronic Application System (TEAS) and the ability to prepare and file various types of trademark prosecution and maintenance documents
• Experience with the USPTO’s Electronic System for Trademark Trials and Appeals (ESTTA) and ability to file various types of trademark appeal and opposition/cancellation documents
• Demonstrated organizational, time management, project management, communication, and timekeeping skills
• Experience creating technically proficient written communications without typographical errors
• Proficiency with various technologies common in trademark and brand management
• Excellent customer service skills

Education & Prior Experience

• Bachelor’s Degree required; Certificate in Paralegal studies from an accredited institution preferred (equivalent experience considered)
• Certified Paralegal a plus
• Minimum of seven years’ experience as a trademark paralegal at a law firm or five years’ experience as a trademark professional

Technology

• Proficiency with Windows-based software and Microsoft Word, Excel, and Outlook, and other informational databases required
• Understanding of AI capabilities, limitations, and responsible use in a professional environment
• Familiarity with, or willingness to learn, firm-approved AI tools (e.g., Copilot, ChatGPT, or similar platforms) to support daily workflow and/or improve work quality

Physical Requirements

• Occasionally required to move from workstation or desk throughout the work area to work independently or with a team to meet with colleagues or supervisor and retrieve work assignments
• May be sedentary and require sitting for extended periods
• Requires manual dexterity to use a phone, enter data into a computer, handle objects, and use office equipment
• Some filing is required, including ability to lift files, open filing cabinets, and bend or stand as necessary

Preferred Qualifications

• Prior experience related to trademark prosecution, maintenance, and dispute resolution

Compensation & Benefits

• Expected pay range: $50.94 to $60.59 per hour (range only for Chicago)
• Actual pay will be adjusted based on experience, location, and other job-related factors permitted by law
• Full time employees may be eligible for a discretionary bonus, health insurance with an optional HSA, short term disability, long term disability, dental insurance, vision care, life insurance, Healthcare and Dependent Care Flexible Spending Accounts, 401K, vacation, sick time, and an employee assistance program
• Additional voluntary programs may include: voluntary accident insurance, voluntary life, voluntary disability, voluntary critical illness and cancer insurance, and pet insurance
• Commuter and Transit programs may also be available in certain markets

Location

• Remote basis with work based in the Chicago or Dallas office