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.
***Salary in the range of $70,000 - $100,000 dependent on location and experience level***
Essential Job Duties:
- 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
Minimum Requirements:
- High school diploma required; bachelor’s degree preferred
- Minimum of three years of trademark administration or paralegal experience, preferably in a law firm
- Additional knowledge of patent prosecution and/or IP litigation experience a plus
- Experience with Microsoft Office Suite and Adobe Pro required
- 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
- 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
Other Requirements:
The requirements described below are representative of those that must be met by an employee to successfully perform the essential functions of this job. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.
Equipment Operated:
This position requires extensive use of a computer and telephone. This position also requires the use of printing, copying, faxing and scanning equipment.
Physical Requirements:
While performing the duties of this job, the employee is occasionally required to sit; stand; talk; see; and hear.
Mental Requirements:
Ability to communicate effectively, verbally and in writing, with a diverse group of people.
Work Environment:
While performing the duties of this job, the employee may be exposed to weather conditions while traveling. The noise level in the work environment is usually moderate.
The above statements are intended to describe the general nature and level of work being performed in this position. They are not to be construed as an exhaustive list of all responsibilities, duties, and skills required of personnel so classified. All personnel may be required to perform duties outside of their normal responsibilities from time to time. Nothing in this job description restricts management’s right to assign or reassign duties and responsibilities to this job at any time.
Benefits provided include: Paid time off, Health insurance, Vision and Dental Insurance, 401k (with an employer match), life insurance, and many others. Please reach out for a comprehensive list of benefits provided.
Ice Miller is committed to recruiting, developing and retaining talented attorneys and professional staff from all backgrounds. To succeed, we take great pride in a culture where everyone at Ice Miller feels respected, is treated fairly and has the opportunity to perform to their highest potential.
Candidates must have permanent authorization to work in the United States.
Ice Miller LLP is an Equal Opportunity Employer.
