Job Details

Paralegal II, Intellectual Property

Company name

Organization Type

In-House

Job Type

Legal Staff

Years of Experience

Min 3 yrs required

Location

Bethesda, MD

Date Last Verified

Aug 17,2017

Posted on

Jul 06,2017
Practice Area
Intellectual Property >> Intellectual Property - Trademark/Copyright
Intellectual Property >> Intellectual Property - General
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Paralegal II, Intellectual Property The candidate will report to a Vice President and Senior Counsel on the IP legal team. Will manage one or more international trademark portfolios, including consulting with the Practice Group attorneys as appropriate; implementing Company strategy; focusing on development and Company goals for the brand; and working with outside U.S. and/or international trademark counsel. Receive trademark search requests from clients, conduct simple on-line trademark screening searches, evaluate results and report preliminary opinion to clients regarding availability of mark(s) for use and/or registration; order and review full trademark searches and investigating relevant listings for details of use, evaluate results and draft opinion memos to clients regarding availability of mark(s) for use and/or registration. Handle all aspects of U.S. trademark prosecution and maintenance, including maintenance of files, consulting with the Practice Group attorneys as appropriate, preparation and filing of applications, Office Action responses, ITU-related documents (e.g., Statement of Use), and Post Registration documents (e.g., Sections 8, 9, and/or 15 Affidavits). Oversee filing and maintenance of international trademark applications and registrations; reviewing, evaluating and consulting with the attorneys regarding correspondence from foreign counsel and drafting responses to same; gathering and providing foreign counsel with information/documentation necessary to prosecute/maintain trademark applications and registrations and respond to Office Actions. Prepare Assignments of trademark registrations and applications and file with PTO Assignment Branch. Oversee execution, notarization and legalization of documents for submission in international trademark matters. Investigate possible infringements and prepare draft cease and desist, or inquiry letters when appropriate. Oversee the progress of IP disputes, including maintenance of files and databases; consulting with the attorneys as appropriate; reviewing and evaluating correspondence from US and foreign counsel and drafting responses to same; and gathering and providing foreign counsel with information/documentation and other evidence relevant to the dispute. Receive requests from clients for IP input on licenses and other agreements, review agreements and recommend revisions to relevant standard IP language, and update and maintain related files and databases, including records for the Company’s international trademark licenses and the recordation of related extracts. Field inquiries from clients regarding various trademark/copyright and other IP issues; report status of IP matters to clients. Assist with due diligence and other intellectual property issues related to deals, agreements, and other transactional matters; prepare summaries and status reports of matters for review for in-house counsel and clients. Draft legal correspondence and memoranda for attorney review. Review outside counsel and other vendor invoices for accuracy and process invoices for payment. Create and maintain electronic files of IP records, correspondence and documents; Enter and update data in IP databases and generate reports as needed. Responsible for own work and contributing to team, department and/or business results. May direct work of non-management staff. Perform other duties and special projects as requested; may involve handling confidential and sensitive material.

Qualification and Experience

The candidate should have two year college degree and 3+ years of relevant work experience Or 10+ years of relevant work experience as a paralegal. Must have substantive subject matter paralegal experience. Certificate from an ABA-approved paralegal program preferred. Should possess knowledge and skills as follows: Hands-on experience in managing international trademark portfolios; manage tasks that have a broad and direct impact on business; structure complex projects efficiently and set/adjust priorities effectively. Proficiency in an online trademark research database (e.g., CORSEARCH) and WESTLAW or LEXIS/NEXIS essential. Proficiency in a trademark records database (e.g., LECORPIO, CPI) needed.

Additional info

Job Number 170013XD

Company info

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