Posted on September 5, 2024
Global statement on diversity and inclusion
At Dentons, inclusion and diversity are not just ancillary values. They are foundational to our business. We believe that inclusion and diversity are essential to the success and strength of our people, our firm, our clients and the delivery of justice in our communities. We commit to having an inclusive environment and a culture of equity where everyone respects, supports and learns from each other, where all our people feel empowered to be their authentic selves and are valued equally for their unique perspectives and experience.
Read our full global inclusion and diversity statement.
Responsibilities
Dentons US LLP is currently recruiting for a full-time Trademark Paralegal to be based in our Chicago, St. Louis, Washington, D.C. or New York office. This position will support the local IP&T Practitioners and the national IP&T Practice Group. This position will report to the Practice Group Leader.
- Prepare and file U.S. trademark prosecution and maintenance documents electronically with the USPTO including but not limited to: applications, office action responses, extensions of time, statements of use, affidavits, renewals, assignments and powers of attorneys
- Conduct trademark screening searches using third search party platforms and common law searches
- Correspond with clients regarding routine phases of trademark prosecution and maintenance matters
- Assist attorneys in TTAB filings, i.e. extensions of time to file a notice of opposition, consent motions
- Prepare and file trademark documents with WIPO including but not limited to applications for International Registration, responses to Notices of Irregularity, renewals, assignments and powers of attorney
- Work with and correspond with foreign counsel in connection with prosecution and maintenance of trademark applications/ registrations outside of the United States, including attending to notarization and legalization of documents
- Prepare and record ownership and change of name documents related to trademarks
- Conduct due diligence on trademark portfolios
- Prepare and file customs registrations and renewals with the U.S. Customs and Border Patrol
- Prepare cost estimates for new filings
- Prepare and file copyright applications for registration
- Assist with trademark enforcement matters including working with and corresponding foreign counsel regarding potential oppositions, cancellations and cease & desist letters
- Assist with monitoring attorney dockets and working with internal personnel to manage deadlines
- Record billable hours timely and accurately utilizing practice/firm billing protocols
Pursuant to New York law, the salary range for this position in New York is $100,000 - $120,000, based on experience.
Dentons offers a competitive salary and benefits package including medical, dental, vision, 401k, profit sharing, short-term/long-term disability, life insurance, tuition reimbursement, paid time off, paid holidays and discretionary bonuses.
Position qualifications
- Attainment of at least a Bachelor's Degree is required
- 4 to 10 years working in a trademark department with at least 4 years of trademark prosecution related duties; experience with copyrights would be a plus
- Passionate about learning new skills and intellectual property
- Exceptional writing, editing, research, organizational, and analytical skills and attention to detail
- Expert in Microsoft Excel, PowerPoint, and Word
- Ability to work well under pressure and handle multiple, simultaneous tasks efficiently
- Strong work ethic, including willingness to work evenings and weekends as needed
- Professional demeanor, attention to detail, and great organizational skills are essential
- Ability to provide direction and training to junior team members
- Ability to maintain discretion and privacy with confidential matters and documents
- Ability to meet minimum billable hourly requirement
- Proficiency in Microsoft Office Suite, PDF creation tool(s), document management software, Elite or other timekeeping software, Internet required
- Excellent client service, ability to work overtime and travel as needed
Equal Opportunities
Equal opportunity employer. Dentons US LLP company considers candidates regardless of race, color, religion, sex, sexual orientation, gender identity, national origin, disability, or veteran status. Pursuant to local ordinances, we will consider for employment qualified applicants with arrest and conviction records.
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