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): email@example.com
Paralegal - Intellectual Property (Chicago, IL)
Barack Ferrazzano Kirschbaum & Nagelberg LLP is looking for a senior paralegal for our Intellectual Property (IP) Group. 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 at least 7-10 of experience in IP, 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.
KNOWLEDGE, SKILLS & ABILITIES REQUIRED:
- A minimum of seven to ten years on the job experience as an IP paralegal ideally in a law firm.
- High level of experience with trademark clearance, due diligence, registration and maintenance.
- Ability to oversee all aspects of U.S. and foreign prosecution and litigation.
- 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.).
- Ability to complete electronic filings in the USPTO, including the TTAB, and WIPO.
Familiarity with TTAB rules and procedures.
- Experience with trademark docketing software, preferably CPI, including docketing, running searches and preparing portfolio reports.
- Working knowledge of domain name registration and management.
- Significant experience with IP portfolio management including international trademark portfolios.
- Experience with analyzing chain of title and updating IP ownership in the U.S. and internationally.
- Experience analyzing trademark watch notices and managing watch services.
Experience with social media a plus.
- Copyright and design patent experience a plus.
- Must be proactive and highly organized.
- Must be a team player.
- Excellent communication skills with the ability to speak with clients.
- Ability to work overtime as needed.
Barack Ferrazzano Kirschbaum & Nagelberg LLP is an equal employment opportunity employer.