Administrative Staff & Paralegals

To apply for a staff or paralegal position at Barack Ferrazzano, please submit your resume in Word format to (unless otherwise stated): careers@bfkn.com

Open Positions

Intellectual Property (IP) Paralegal (Chicago, IL)

Barack Ferrazzano is looking for a paralegal for our IP practice area. Our IP group has extensive experience in all facets of IP practice, including counseling, clearance, licensing, prosecution, business transactions involving intellectual property, registration, enforcement, and litigation. We represent clients in a broad range of industries, including fashion, cosmetics, motor vehicle, manufacturing, technology, health care, food and beverage, real estate, and financial services. The ideal candidate will possess 7-10 years of experience in intellectual property, including conducting trademark searches, coordinating U.S. and international trademark filings, preparing responses to Office Actions, drafting correspondence, preparing of worldwide assignments and post-transaction closing recordings, and assisting with U.S. and international oppositions and cancellations. Additional qualifications include good research skills, and strong analytical skills. The position is non-exempt with a 40-hour work week with overtime pay and salary commensurate with experience.

KNOWLEDGE, SKILLS & ABILITIES REQUIRED:

1. A minimum of 7-10 years on the job experience as an IP paralegal ideally in a law firm
2. High level of experience with trademark clearance, due diligence, registration and maintenance
3. Ability to oversee all aspects of U.S. and foreign prosecution and litigation
4. Must be proficient with relevant IP databases including USPTO and WIPO websites and Corsearch for searching and trademark watching, as well as experience with vendors (e.g. Clarivate, Corsearch, etc.)
5. Ability to complete electronic filings in the USPTO, including the TTAB, and WIPO
6. Familiarity with TTAB rules and procedures
7. Experience with trademark docketing software, preferably CPI, including docketing, running searches and preparing portfolio reports
8. Working knowledge of domain name registration and management
9. Significant experience with IP portfolio management including international trademark portfolios
10. Experience with analyzing chain of title and updating IP ownership in the U.S. and internationally
11. Experience analyzing trademark watch notices and managing watch services
12. Experience with social media a plus
13. Copyright and design patent experience a plus
14. Must be proactive and highly organized
15. Must be a team player
16. Excellent communication skills with the ability to speak with clients
17. Ability to work overtime as needed

Intellectual Property (IP) Docketing Specialist (Chicago, IL)

The IP Docketing Specialist works with the Intellectual Property team based in the Chicago office. This position is an integral part of a collaborative and dynamic team responsible for timely entry, audit, and ongoing review of IP data, with the primary goal of maintaining the accuracy and integrity of the docketing system. This position will report to the IP Docketing Manager and work with other talented IP Docketing team members, all of whom share a passion for client service and providing highly varied and complex support to our attorneys and paralegals. The position is non-exempt. Work is normally performed 8 AM-5 PM (40-hour week) with salary commensurate with experience.

DUTIES & RESPONSIBILITIES:

1. Assist the IP Docketing Manager with daily docketing, proofing other team member’s docketing entries, and filing of IP communications (electronic and paper)
2. Assist the IP Docketing Manager with daily docket notifications of hard deadlines
3. Sorting of emails delivered to the IP Docketing Department for priority processing
4. Assist with special IP docketing projects as needed
5. Create queries from the docketing system and prepare reports in PDF, Word or Excel formats, based on criteria provided by attorneys/paralegals or as requested by clients
6. Assist the IP Docketing Manager with the intake/transfer of files from clients or prior counsel (including file organization, review, labeling, preparation of lists, reports, etc.)
7. Clean up/update client contact information in IP docketing system and maintain updated client information in the system on an ongoing basis
8. Annual review and audit of physical files for sending to off-site storage, assembling the files, boxing and labeling same, entering information into the firm’s box storage database and updating the IP docketing system accordingly
9. Consistent and predictable attendance
10. Other duties as assigned

KNOWLEDGE, SKILLS & ABILITIES REQUIRED:

1. High School Diploma or equivalent
2. BA/BS in related field preferred - with an interest in IP legal work
3. A minimum of 2 years working in a law firm or company handling IP docketing duties (particularly, trademarks)
4. Working knowledge of CPi or similar docketing system and MS Office including Outlook, Word and Excel
5. Outstanding verbal and written communication skills
6. Ability to prioritize and manage time within strict deadlines
7. Ability to organize work directed by multiple people and communicate conflicts to IP Docketing Manager
8. Highly proficient in time management, organization, planning and prioritization
9. Having enthusiasm, a positive attitude, team orientation, self-motivation, and sense of humor is a must

WORKING CONDITIONS & PHYSICAL EFFORT:

1. Work is normally performed in a typical office work environment
2. Ability to stand for extended periods of time
3. Public speaking
4. No or very limited exposure to physical risk

Barack Ferrazzano Kirschbaum & Nagelberg LLP is an equal employment opportunity employer.