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Trademark Prosecution Paralegal II

Job ID: 5168

Updated: Sep 24, 2019

Location: Chicago, IL, United States

Category: Paralegal

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About Kirkland & Ellis

Kirkland & Ellis LLP is a preeminent, full-service law firm with offices around the world and a staff as diverse as the practice areas we support. Our clients range from Fortune 100 companies to medium and small corporations, financial institutions, and private equity firms.  Known for our commitment to excellence, Kirkland strives to provide superior service to our clients as well as our fellow employees. From Information Technology to Human Resources, Paralegal Services to Business Development, Kirkland offers non-attorney professionals challenging careers in a variety of functional areas. Whether starting or growing your career, Kirkland can offer a performance-driven culture filled with bright and innovative teams of co-workers.

Essential Job Functions

The intellectual property group is seeking a Paralegal to join its busy trademark prosecution practice group in either the New York or Chicago office.Extensive experience in connection with trademark prosecution and the ability to work independently and manage others is essential.  The Paralegal will be responsible for the following tasks:

ESSENTIAL FUNCTIONS 

  • 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

Qualifications & Requirements

Education, Work Experience, Skills

A Paralegal professional with 10 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

How to Apply

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

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.