Temporary Remote Trademark Paralegal

Working from home
Hourly 1099 compensation, estimated 20-30 hours per week
Nov 29, 2023
Dec 29, 2023
Contract Type
Contract, Part-Time, Remote

Temporary Remote Paralegal Position (part time, 1099 independent contractor), with potential for a long-term, flexible part-time or 3/4-time position for the right candidate. 


Seeking a BA graduate with a minimum of 3-5 years’ experience in trademark and intellectual property law for an IP boutique law firm, Innis Law Group LLC, located in Chicago River North.  Temporary position is remote, with the potential for long-term remote/in-office hybrid for a local candidate.


Start date of December 4, 2023 or January 3, 2024 and temporary position is expected to last at least 3-4 months.


Responsibilities include, but are not limited to:

  • Handle all aspects of U.S. trademark prosecution and maintenance, including: preparing, filing and docketing trademark applications; preparing responses to simple PTO office actions; preparing and filing statements of use/extensions of time, renewals and declarations of use, drafting client correspondence, recording assignments and other documents Correspond with foreign counsel on trademark filings, office actions, renewals and other prosecution and conflict matters. Monitor and assist with enforcement activities related to protected brands, including: docketing and tracking of deadlines and action items, investigation of possible trademark infringement, and drafting of documents for filing with the Trademark Trial and Appeal Board Perform internet research projects and other special projects on an as‑needed basis Generate and edit status reports Provide support to trademark practitioners in other offices as needed Data entry into trademark docketing system and report generation from docketing software
  • Creating and opening new trademark files/matters
  • Processing foreign associate invoices
  • Reviewing trademark literature and advertising materials for proper use/content
  • Managing the trademark docket
  • Report generation from docketing software
  • Retrieving information from databases
  • Updating reports and records
  • Processing invoices
  • Reviewing trademark literature and advertising materials for proper use/content
  • Providing attorney support for adversarial matters

The ideal candidate will have:

  • Exemplary, proven research and writing ability
  • Excellent communication and interpersonal skills
  • Creativity, flexibility and problem-solving skills
  • Ability to learn new computer applications quickly and proficiently
  • Strict attention to detail and ability to manage large amounts of data with no errors
  • Proficiency in docketing, preferably CPI or comparable IP software
  • Three to 5 years’ minimum trademark filing and prosecution experience required
  • Advanced proficiency in USPTO TEAS, TSDR, TESS, ESTTA and other computer systems
  • Prior in-house trademark experience a plus Litigation experience in any discipline a plus Bachelor’s degree and completion of paralegal program of study, or clear demonstration of equivalent knowledge and skill is strongly preferred Highly developed skills in time and task management Highly developed attention to detail and excellence in all firm’s work product and client service Advanced proficiency in the use of Microsoft Office computerized business applications (Word, Excel, and Outlook) for the creation and editing of complex documents, spreadsheets, and electronic mail

This is a position that can grow and adapt to the abilities, interests and proven level of performance of the individual.  Compensation is commensurate with experience.  Please send resume to lsmith@innislaw.com