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Paralegal II - Trademark Prosecution

Job ID: 7635

Updated: Feb 29, 2024

Location: New York, NY, United States

Category: Paralegal

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About Kirkland & Ellis

At Kirkland & Ellis, we are united in our ambition and drive to move forward. We share core values that help us achieve excellence: collaboration, talent empowerment, service, inclusion, respect and gratitude. Our people are our greatest asset, and we invest in the brightest talent and encourage a diversity of perspectives and strengths to create dynamic teams that operate at the pinnacle of their field. Our talented professionals show up every day knowing they will engage in meaningful work, continuous learning and professional development.
 
As one of the world’s leading law firms, we serve a broad range of clients with market-leading practices in private equity, M&A and other complex corporate transactions; investment fund formation and alternative asset management; restructurings; high-stakes commercial and intellectual property litigation; and government, regulatory and internal investigations. We handle the most complicated and sophisticated legal matters because we don’t just meet industry standards, we create them. We bring innovation and entrepreneurialism to every engagement and, as a result, have long-standing client relationships with leading global corporations and financial sponsors. With 6,500 employees (including 3,500 lawyers) operating from 20 offices across the United States, Europe, the Middle East and Asia, we are one of the largest law firms in the world and a top financial performer.

Essential Job Functions

The Intellectual Property group is seeking a Paralegal to join its trademark prosecution practice group in the New York office.  Extensive experience in connection with trademark prosecution and the ability to work independently and manage others is essential. 

ESSENTIAL FUNCTIONS (This list is not exhaustive and may be supplemented and changed as necessary.)

The Paralegal will be responsible for the following tasks:

  • Order and analyze trademark searches and assist attorneys in compiling results from such searches to provide clearance analysis
  • Handle all types of filings at the USPTO and Trademark Trial and Appeal Board in order to prosecution, maintain, and enforce trademarks
  • Assist attorneys in preparing cost estimates for trademark clearance, prosecution, and maintenance.
  • Analyze chain of title information for trademarks and prepare appropriate assignments and maintenance documents
  • Order file wrappers, copies of recorded assignments and security interests, and title documents recorded at government offices
  • Draft IP assignments and IP security agreements and releases
  • Review executed IP assignments to ensure they are properly executed, notarized, stamped, witnessed, etc.
  • Prepare recordation cover sheets or electronic filings for documents to be recorded at USPTO or Copyright Office
  • Arrange for legalization (by consulate or by Apostille) of assignments for recording in foreign trademark and patent offices
  • Monitor and maintain trademark prosecution docket for due dates for responses, maintenance filings, renewals, oppositions and cancellations
  • Draft trademark/service mark applications, affidavits of use, maintenance and renewal filings, and assignment agreements
  • Draft responses to trademark examining attorney’s official action
  • Communicate with and manage foreign trademark counsel and agents regarding registration and maintenance matters
  • Manage and train more junior paralegals
  • Experience in Blue Book and Cite Checking is a plus.

OTHER FUNCTIONS This list is not exhaustive and may be supplemented and changed as necessary.

  • Any other functions/duties as assigned by management.

Qualifications & Requirements

Education, Work Experience, Skills

A Paralegal professional with 5 or more years of experience in Trademark Prosecution work, including knowledge of USPTO and TTAB rules and procedure, familiarity with international trademark filing procedures, conducting due diligence reviews of intellectual property, drafting correspondence and diligence memoranda, and preparing of worldwide assignments and recordings.  Additional qualifications include excellent research and communication skills, and strong analytical and organizational skills.  A Bachelor’s degree preferred, though not required.  Overtime and travel as required.

Technologies/Software

  • Microsoft Outlook, Word, PowerPoint, Excel, SAEGIS and other search platforms (e.g., Thomson Compumark), and trademark docketing software

Certificates, Licensures, Registrations

  • Bachelor’s degree is preferred

Tools and Equipment

  • N/A

WORK ENVIRONMENT

This job operates in a professional office environment.

How to Apply

Thank you for your interest in Kirkland & Ellis LLP.  To complete an application and submit your resume, please click "Apply Now."

For applicants who are based in NYC, visit the following link for pay range information: https://staffjobsus.kirkland.com/pages/jobid7635

Equal Employment Opportunity

All employment decisions, including the recruiting, hiring, placement, training availability, promotion, compensation, evaluation, disciplinary actions, and termination of employment (if necessary) are made without regard to the employee’s race, color, creed, religion, sex, pregnancy or childbirth, personal appearance, family responsibilities, sexual orientation or preference, gender identity, political affiliation, source of income, place of residence, national or ethnic origin, ancestry, age, marital status, military veteran status, unfavorable discharge from military service, physical or mental disability, or on any other basis prohibited by applicable law.

Closing Statement

The www.kirkland.com job postings and recruiting mailbox are for candidates only. If you are a recruiter, search firm or employment agency, and do not have a signed contract with Kirkland & Ellis LLP ("K&E") and have not been asked specifically to submit candidates, you will not be compensated in any way for your referral of a candidate even if K&E hires the candidate. Direct contact with K&E employees in an attempt to present candidates is inappropriate and will be a factor in determining any future professional relationship with the Firm. #LI-Hybrid #LI-SM1