Trademark Paralegal

Thompson Coburn LLP currently has a position available for a full time Trademark Paralegal in our St. Louis office.  Qualified applicants will posses an undergraduate degree and/or a paralegal certificate as well as one year of trademark experience.  The person selected for this position must be able to work closely with a diverse group of people in a fast-paced environment.



Job Description

The ideal candidate will have the ability to perform a variety of tasks in connection with the prosecution and maintenance of U.S. and foreign trademarks.  Excellent written and oral communication skills and proficiency with MS Office 2003 are required.  The ideal candidate will be detail oriented, show initiative, possess strong organizational skills, be very enthusiastic and work well independently. 

 

Job Responsibilities

· Research and compile information pertaining to national and international intellectual property rights.

· Prepare status summary reports for attorneys and clients.

· Coordinate international filings with foreign law offices and/or other foreign entities.

· Maintain docket system of due dates for actions, including responses, renewals, oppositions, Section 8 and 15 affidavits.

· Monitor foreign filing deadlines.

· Prepare correspondence to clients, opposing parties; prepare pleadings to the U.S. Patent and Trademark Office.

· Maintain trademark registrations and applications in the United States and internationally.

· Assist in intellectual property-related litigation.

· Assist in oppositions, interferences and cancellations; draft necessary pleadings for use in these inter partes proceedings.

· Upon allowance of U.S. trademark applications, review file and verify that all required documents have been filed and accurately entered by the Patent and Trademark Office.

· Investigate foreign counsel work references, legal backgrounds and abilities to represent clients in a capable manner.

· Review and take action on correspondence received from foreign associates.

· Review associate invoices for accuracy and process for payment.

 

Job Requirements

This position has the following requirements:

· Perform on-line searches of Patent and Trademark Office (PTO) records, industry databases and general legal research.

· Conduct searches for information regarding trademarks.

· Prepare and file applications, statements of use, affidavits of use, renewal applications, and assignments.

· Draft responses to PTO actions and oppositions.

· Police clients’ trademarks to guard against potential infringements.

· Review all products, advertising and packaging to ensure proper use of clients’ trademarks.

· Maintain foreign trademarks, which includes corresponding directly with foreign associates and instructing them to search trademarks and to file applications, affidavits of use, renewals and oppositions.

· Obtain legalizations and certifications for filing foreign trademarks.

· Monitor Trademark Official Gazette trademark notices to keep clients updated as to potential conflicts.

· Inform clients of the progress of the examination of their foreign patent and/or trademark applications. 

· Communicate with clients of actions due in connection with the maintenance of foreign trademarks registrations and request instruction regarding the same. 

 

Thompson Coburn LLP, is a large full service, multi-state firm with offices in Chicago,  St. Louis, Southern Illinois  and Washington D.C. At Thompson Coburn, our behavior and the expectations we have of ourselves are guided by the values that we hold in the highest regard: integrity, a passion for excellence, a focus on serving the client, a value of diversity, innovation, creativity, trust and loyalty.  Within the Firm, we value each other as people and colleagues.  In addition to the exceptional working environment and a competitive salary, Thompson Coburn provides the following benefit options are available to  qualifying employees:

· Medical and Vision Insurance through United Healthcare

· Dental Insurance

· Life Insurance & ADD policies

· Short & Long Term Disability Insurance

· Firm paid 401(k) & Profit Sharing plans

· Paid parking Downtown or parking stipend for MetroLink

· Section 125 Plan (Pre-tax premiums, dependent care and medical reimbursement)

· Paid holidays

· Paid Time Off (PTO)

· Employee Assistance Program (EAP)

· Employee Wellness Program

· Tuition Reimbursement

· College Savings Plan Deductions (529 Plans)

· Long Term Care

 

 Candidates interested in applying to Thompson Coburn LLP are required to complete our online application, which can be found by visiting the site below.

 



 

www.thompsoncoburncareers.com

Equal Opportunity Employer M/F/D/V