Katten is a firm of first choice for clients seeking sophisticated, high-value legal services in the United States and abroad. Our nationally recognized practices include corporate, financial services, litigation, real estate, environmental, commercial finance, insolvency and restructuring, intellectual property, and trusts and estates. Our more than 700 attorneys serve public and private companies, including a third of the Fortune 100, as well as a number of government and nonprofit organizations and individuals. We provide full-service legal advice from locations across the United States and in London and Shanghai.
Trademark Paralegal
The Trademark Paralegal is responsible for providing paralegal support and assistance to attorneys in the area of Intellectual Property in the coordination, management, and supervision of all aspects of United States Patent and Trademark Office filings, including responses, petitions, inquiries of PTO personnel, and searches. This position requires heavy client contact. The Paralegal maintains professionalism and strict confidentiality in all client and Firm matters.
This position can be located in either the Charlotte, Chicago, Dallas, Los Angeles, New York or Washington, D.C. office. Katten is currently working remote at this time. After the office reopens, Katten will offer the opportunity to work from home with occasional office presence required (KattenFlex).
Essential Duties and Responsibilities include, but may not be limited to, the following. Other duties may be requested and/or assigned. Essential functions are primary job duties that an individual must be able to perform successfully with or without a reasonable accommodation. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.
Client billable hour requirement: 1,700 hours annually (142 client billable hours average per month).
Manage domestic and foreign prosecution for a large portfolio including recordation of assignments, renewals, offices’ actions, and new filings.
Prepare US federal and state trademark registration application documents; draft trademark goods/services specifications.
Prepare, review, and oversee trademark filings to the United States Patent and Trademark Office through issuance of trademark
Prepare inquiries to and responses from the United States Patent and Trademark Office.
Assist with trademark analysis including ability to review, investigate results and summarize trademark full searches.
Draft letters to clients regarding trademark information.
Utilize on-line trademark database and conduct trademark clearance searches.
Perform file organization and maintenance.
Maintain up-to-date time reports to ensure accurate client billing.
Perform due diligence ownership searches on trademarks, copyrights and domain names to assist corporate department with M&As, security agreements, etc.
Supervisory Responsibilities
This position has no direct supervisory responsibilities, however, has the authority to delegate and supervise work performed by Project Assistant and/or Paralegal I and II staff on a case-by-case basis.
Knowledge, Skills and Abilities
Bachelor’s degree and five or more years progressive work experience in the intellectual property area preferably in a law firm environment; or equivalent combination of education and experience. Legal research knowledge and ability to use law library are required. Paralegal certificate from an ABA accredited paralegal program a plus.
Knowledge and experience working with the United States Patent and Trademark Office. Applicable knowledge and understanding of all components of domestic and foreign trademark principles, rules, and regulations with respect to filing procedures and requirements especially regarding Internet filing capabilities. Knowledge of foreign trademark rules in order to prepare foreign filings highly desirable.
Must be familiar with Trademark Trial and Appeal Board (TTAB) filing requirements and be able to assist in all aspects of TTAB proceedings. Litigation experience a plus.
Computer proficient with experience and working knowledge of Westlaw and other intellectual property-related databases including Serion and Corsearch, Internet research, due diligence, Excel, Outlook, and MS Word preferred. Must be proficient in trademark docketing databases and experience with Foundation IP is a plus.
Exhibit high degree of initiative with excellent analytical, technical, and critical-thinking skills requiring an aptitude for detail, precision, and logic in order to analyze and research intellectual property data, process information, conduct legal research, and perform essential duties.
Excellent organizational skills including record keeping, data collection, and system information. Ability to compile and analyze data and furnish concise, detailed information in report format, written correspondence, e‑mail, or verbally.
Excellent interpersonal, verbal, and written communication skills. Ability to communicate with courtesy and diplomacy, efficiently follow written and verbal instructions, provide information and training, and maintain effective relationships with a diverse group of attorneys, clients, staff, and outside contacts.
Dependable team player who works collaboratively and cooperatively with others in a team-oriented environment. Ability to act independently and make decisions within scope of the position’s responsibilities.
Ability to organize, prioritize, and oversee numerous tasks from inception to completion, and ensure work is completed within strict deadlines.
Ability to and manage multiple priorities simultaneously in a fast-paced, deadline-driven, detail-oriented work environment, and adapt to changes in workflow. Proactive with excellent troubleshooting, problem resolution, and follow-through skills.
Possess excellent knowledge of reading, writing, grammar, spelling, punctuation, proofreading, and formatting in order to interpret source data, prepare intellectual property documents and forms, proofread material for grammatical, typographical, and spelling errors, and perform file maintenance.
Ability to perform mathematical calculations and apply mathematical concepts when computing, reconciling balances, and verifying numerical data on forms and documents.
Ability to operate standard office equipment including computer, laser printer, telephone, photocopier, calculator, scanner, facsimile, etc.
Ability to occasionally retrieve and distribute files, written documentation and copies, or office supplies weighing up to 20 pounds.
Work occasionally requires more than 37.5 hours per week to perform the essential duties of the position.
Ability and availability to travel to other Firm locations when required.
We offer an outstanding benefit package which includes: medical/dental/vision, 401k with employer contribution; transportation fringe benefit program; back-up care option; generous paid time off policy; and long-term and short-term disability policies.
Katten will consider for employment qualified Applicants with Criminal Histories in a manner consistent with the requirements of Article 9 to Chapter XVIII of the Los Angeles Municipal Code.
Katten Muchin Rosenman LLP is an Equal Opportunity Employer/AA-M/F/SO/Disability/Veteran.
