Paralegal

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Job Description:
The trademark paralegal is responsible for working with in-house attorneys, outside counsel, and internal marketing and business partners to administer the Company's trademark portfolio. This includes primary responsibility for maintaining the Company's database for all foreign and domestic trademarks. Other responsibilities include filing domestic and foreign trademark applications and maintaining records of worldwide trademarks, oppositions, cancellations, and conflict matters.

The trademark paralegal is heavily involved in working with business unit personnel on trademark matters including searches for new product names and slogans and gathering evidence of use for various domestic and foreign trademarks. The trademark paralegal prepares reports on trademark activity as needed, dockets trademark related activity, assists with review of watch notices, performs internet research projects and other special projects as requested and assists with trademark matters during mergers/acquisitions and divestitures. The trademark paralegal is responsible for setting up legal matter numbers, reviewing and approving legal invoices and handling all invoicing problems. The position is a high activity position that requires the paralegal to handle multiple high profile projects under tight timelines.

Responsibilities:

• Conducts preliminary clearance searches using USPTO website and internet. Reviews full searches and prepare memos to marketing staff regarding availability of marks

• Dockets and maintains global trademark records using docketing software

• Works with marketing staff to obtain and assures the accuracy of specimens for Statements of Use, Extensions of Time and 8 & 15 affidavits

• Assists attorneys with trademark assignments and name/address change records in U.S. and foreign countries

• Verifies use requirements are fulfilled

• Assists with policing and protecting the Company's intellectual property, including review of watch notices and other information

• Investigates possible infringements

• Works with business unit personnel and attorneys to gather evidence to support opposition and cancellation actions, and draft cease and desist or inquiry letters when appropriate

• Handles post-registration issues involving proper marking and use requirements and maintenance and renewal deadline

• Provides support on various other matters, including intellectual property agreement, copyrights, and domain names

• Evaluates laws, rules and regulations and provides concise written analysis to attorneys

• Researches relevant facts and case law to inform legal support for internal projects

• Offers practical and succinct legal guidance to clients under attorney supervision

• Collaborates with outside counsel to prepare trademark filings

• Works with business and control partners on audit and other control issues

• Works with technology team to maintain up-to-date trademark docketing technology

Skills:

• Attention to Detail

• Interpret Relevant Laws, Rules, and Regulations

• Issue Management

• Legal Drafting and Writing

• Problem Solving

• Advisory

• Collaboration

• Policies, Procedures, and Guidelines

• Regulatory Compliance

• Strategic Thinking

• Analytical Thinking

• Critical Thinking

• Oral Communications

• Prioritization

• Understanding of Trademark Law

• Trademark Searching and Docketing

• Strong Communication Skills (verbal and written)

• Strong Organizational Skills with Ability to Handle Multiple Projects

• Experience with MS Excel, MS PowerPoint, MS Word, and Trademark Docketing/Management Software

• Research

Required Qualifications:

• 2+ years' experience as a trademark paralegal at a law firm or in-house.

Minimum Education Requirement: High School Diploma / GED / Secondary School or equivalent

Shift:
1st shift (United States of America)

Hours Per Week:
40

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