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Job Details

IP Trademark Assistant

Company name
Barnes & Thornburg LLP

Experience
2 yrs required

Location
Chicago, IL

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Profile

SUMMARY:

​Under the direct supervision of a Chicago IP Partner and according to established policies and procedures, the Trademark Assistant is responsible for the general support of the Chicago Office’s trademark practice group.

ESSENTIAL DUTIES AND RESPONSIBILITIES:

​1. Reviews incoming correspondence for the Trademark group from the USPTO, foreign associates and clients, and drafts appropriate correspondence in response.

2. Reviews the Trademark docket; prepares letters, assignments, Revocations of Powers of Attorney, Renewals, Trademark office documents and other appropriate documentation based on the docket review.
3. Prepares and electronically files with the USPTO new applications, Statements of Use, Extensions of Time, Powers of Attorney and other maintenance documents.
4. Orders certified copies; obtains legalization of documents; prepares foreign filing estimates.
     a. Inputs new, incoming work;
     b. Maintains trademark database;
     c. Maintains trademark form letters.
5. Prepares intake and inventory reports for clients and prepares new matter short forms.
6. Reviews, assesses and researches trademark watch notices in consultation with IP partner.
7. Performs trademark searches and review of search results in consultation with IP partner.

KNOWLEDGE, SKILLS AND ABILITIES REQUIRED:

​1. Working knowledge of the Firm’s core applications, including Word XP, Excel, GroupWise, CD Entry and iManage, and Global IP Estimates.

2. Experience with the IP Department’s software application, Computer Packages Inc. (“CPI”).
3. Knowledge and understanding of the office procedures, fees and forms of the USPTO.
4. A minimum of two years’ experience working in a law firm Intellectual Property Department preferred.
5. Effective written and verbal communication skills.  Should be able to adapt communication style to suit different audiences, both internally (IP attorneys) and externally (clients).
6. Attention to detail.  Should be able to develop accurate written materials.
7. Action-oriented.  Should be able to follow up on feedback to ensure positive outcomes and be pro-active.

​EEO

Company info

Barnes & Thornburg LLP

Company Profile
Barnes & Thornburg LLP is a national, full-service law firm representing clients ranging from Fortune 500 corporations to entrepreneurial growth companies. We provide services in more than 50 areas, including litigation, labor and employment, global services, healthcare, governmental services and finance, intellectual property, environmental, business, construction, white collar crime, life sciences, real estate, energy, telecommunications, transportation and utilities; and finance insolvency and restructuring.

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