Paralegal - Trademark

Ice Miller LLP•New York, NY

3d•$70,000 - $100,000•Hybrid

About The Position

Ice Miller LLP is seeking a Trademark Paralegal to support attorneys in our Intellectual Property group. This person must be capable of working in a fast-paced environment with time-sensitive materials and maintain strict confidentiality due to the nature of the position. Remote and hybrid remote/in-person work arrangements will be considered.

Requirements

High school diploma required
Minimum of three years of trademark administration or paralegal experience, preferably in a law firm
Experience with Microsoft Office Suite and Adobe Pro required
Excellent time management skills and ability to work in high pressure environments; ability to shift priorities quickly without compromising deadlines or quality
Ability to be proactive and to identify and address problems quickly
Excellent clerical skills and knowledge of grammar, spelling and punctuation
Exceptional attention to detail and ability to work independently
Computer proficient, intermediate or advanced experience using Microsoft Office products such as Word, Excel, and PowerPoint
Ability to perform all essential duties
Extensive use of a computer and telephone
Use of printing, copying, faxing and scanning equipment
Ability to communicate effectively, verbally and in writing, with a diverse group of people
Candidates must have permanent authorization to work in the United States.

Nice To Haves

Bachelor’s degree preferred
Additional knowledge of patent prosecution and/or IP litigation experience a plus
Familiarity with AltLegal docketing software, PageVault, Stencil a plus
Familiarity with Corsearch TrademarkNow or comparable trademark search platform, WIPO Brand Database, and WIPO Madrid Monitor

Responsibilities

Preparing and filing domestic, foreign, and WIPO trademark applications and related prosecution filing documents, such as statements of use, requests for extensions of time, maintenance declarations, declarations of use and incontestability, renewal applications, priority documents, and powers of attorney; preparing and recording assignment and change of name documentation
Managing worldwide client trademark portfolios
Assisting with strategy and correspondence for trademark enforcement abroad and online, including customs recordals and e-commerce brand protection platforms
Researching the TMEP for solutions to procedure questions
Knowledge of US and foreign rules and monitoring any changes
Assisting with the preparation of routine reporting correspondence to clients and foreign associates
Preparing foreign filing cost estimates
Compiling documentation required for foreign filings, corresponding with foreign associates on filing and prosecuting applications and renewing registrations; preparing and/or obtaining documents for legalization; reviewing all incoming correspondence from foreign associates for essential docketing and for non-substantive responses due in connection with filing of applications
Reviewing office actions and initial drafting of reporting emails to clients
Performing trademark searches and drafting findings
Preparing reports, charts, and/or lists of trademark-related information upon client or attorney request
Researching and evaluating potential specimens showing use for submission to the USPTO or foreign jurisdictions requiring a declaration of continued use
Assisting with TTAB proceedings, foreign opposition and cancellation proceedings, and trademark litigation, including drafting and filing documents, maintaining pleading files and dockets, and related tasks
Assisting with registration, maintenance, and transfer of domain names and UDRP proceedings
Coordinating with attorneys and accounting department to assist with complicated billing inquiries, as needed
Proactively managing trademark prosecution dockets; monitoring and following up on dates associated with the US and foreign patent prosecution docket, including clearing dates and providing follow-up with attorneys, paralegals, clients, and foreign associates in order to provide adequate time to respond
Providing support to IP team members with special projects and overflow of routine responsibilities
Maintaining positive relations with internal clients and co-workers and contributing to the self-directed team structure to assist with overflow and specialized tasks within guidelines set by the firm