The Chicago office of McDermott Will & Emery is seeking an Intellectual Property Trademark Staff Attorney for the IP Prosecution, Transactions and Strategy Practice Area. The Intellectual Property Trademark Staff Attorney provides support to attorneys in rendering legal services to clients. This position assists in all procedural and substantive matters regarding domestic and foreign trademarks.
As an Intellectual Property Trademark Staff Attorney, you will: • Prepare new trademark, domain and copyright applications and other trademark prosecution documents for filing at appropriate trademark offices, including gathering all necessary information from clients regarding same; monitoring and maintaining applications through issuance • Prepare substantive arguments in response to official correspondence from the U.S. Patent and Trademark Office and foreign trademark offices for trademark applications. • Provide assistance in litigation and enforcement matters, both in the U.S. and in foreign jurisdictions. • Draft license agreements, assignments, and other trademark-related transactional documents. • Review and revise intellectual property provisions in agreements (including, for example, purchase agreements and service agreements). • Communicate with attorneys, as well as clients, and foreign agents regarding preparing and processing all paperwork necessary during pendency of trademark applications, including formalizing original documents • Communicate with foreign associates on initial filing requests and other correspondence during the prosecution of foreign applications • Prepare reports for clients regarding pending trademark applications and registered trademarks; oversee accuracy and necessary follow-up on daily docket entries; maintain portfolios with supervising attorneys • Review electronic docket daily • Assist with trademark searches, including initial screening searches, both in the U.S. and in foreign jurisdictions.
Job Requirements • At least 5-10 years of trademark-specific work experience • Knowledge of Microsoft Office Suite (Excel, Outlook, PowerPoint, and Word) • Knowledge of trademark search software • Knowledge of international IP legal databases • Knowledge of docketing software • Strong written and verbal communication skills • Strong organizational skills • Strong client service skills • Ability to work under tight deadlines and prioritize responsibilities • Ability to prioritize as well as accurately capture billable tim