Paralegal - Trademark

Job Summary

Ice Miller LLP is seeking a Trademark Paralegal to support attorneys in our Intellectual Property group. This person must be capable of working in a fast-paced environment with time-sensitive materials and maintain strict confidentiality due to the nature of the position. Remote and hybrid remote/in-person work arrangements will be considered.

Essential Job Duties

• Preparing and filing domestic, foreign, and WIPO trademark applications and related prosecution filing documents
• Managing worldwide client trademark portfolios
• Aiding with strategy and correspondence for trademark enforcement abroad and online, including customs recordals and e-commerce brand protection platforms
• Researching the TMEP for solutions to procedure questions
• Assisting with TTAB proceedings, foreign opposition and cancellation proceedings, and trademark litigation, including drafting and filing documents, maintaining pleading files and dockets, and related tasks
• Assisting with registration, maintenance, and transfer of domain names and UDRP proceedings
• Coordinating with attorneys and accounting department to assist with complicated billing inquiries, as needed
• Proactively managing trademark prosecution dockets; monitoring and following up on dates associated with the US and foreign patent prosecution docket, including clearing dates and providing follow-up with attorneys, paralegals, clients, and foreign associates in order to provide adequate time to respond
• Providing support to IP team members with special projects and overflow of routine responsibilities
• Maintaining positive relations with internal clients and co-workers and contributing to the self-directed team structure to assist with overflow and specialized tasks within guidelines set by the firm

Minimum Requirements

• High school diploma required; bachelor’s degree preferred
• Minimum of three years of trademark administration or paralegal experience, preferably in a law firm
• Additional knowledge of patent prosecution and/or IP litigation experience a plus
• Experience with Microsoft Office Suite and Adobe Pro required
• Familiarity with AltLegal docketing software, PageVault, Stencil a plus
• Familiarity with Corsearch TrademarkNow or comparable trademark search platform, WIPO Brand Database, and WIPO Madrid Monitor
• Excellent time management skills and ability to work in high pressure environments; ability to shift priorities quickly without compromising deadlines or quality
• Exceptional attention to detail and ability to work independently
• Computer proficient, intermediate or advanced experience using Microsoft Office products such as Word, Excel, and PowerPoint

Other Requirements

• The requirements described below are representative of those that must be met by an employee to successfully perform the essential functions of this job.
• Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.

Equipment Operated

• This position requires extensive use of a computer and telephone.
• This position also requires the use of printing, copying, faxing and scanning equipment.

Physical Requirements

• While performing the duties of this job, the employee is occasionally required to sit; stand; talk; see; and hear.

Mental Requirements

• Ability to communicate effectively, verbally and in writing, with a diverse group of people.

Work Environment

• While performing the duties of this job, the employee may be exposed to weather conditions while traveling.
• The noise level in the work environment is usually moderate.

Benefits

• Paid time off
• Health insurance
• Vision and Dental Insurance
• 401k (with an employer match)
• life insurance
• and many others.

Equal Opportunity Employer

Ice Miller is committed to recruiting, developing and retaining talented attorneys and professional staff from all backgrounds. To succeed, we take great pride in a culture where everyone at Ice Miller feels respected, is treated fairly and has the opportunity to perform to their highest potential.