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Trademark Paralegal - Inhouse The candidate will be responsible for managing the trademark docketing database; modifying, updating and creating records, running reports and uploading images/documents. Written and verbal communication with all business units, foreign lead counsel, vendors and the IP team and legal members on all trademark-related matters including: new trademark filings, renewals, clearance search requests, drafting of the descriptions of goods/services, assembling specimens of use, obtaining foreign use specimens, filing customsâ€™ recordations, copyright matters and patent issues. Review and analyze trademark watch notices and being able to provide feedback and recommendations. Prepare and file all relevant forms with the U.S. Patent & Trademark Office (â€œUSPTOâ€) including, but not limited to: new applications (use and intent-to-use basis), requests for extensions of time, Statements of Use, Responses to Office Actions, Declarations of Use and Incontestability, Renewals, recording of any new trademark assignments and TTAB filings. Work with international teams and counsel on recording authorized vendors/factories with foreign customs and legalizations of documents for filing in foreign territories. File any DMCA (Copyright) takedowns/notices for any claimed infringement matters. Conduct preliminary trademark clearance searching for a variety of brands, sometimes on a rush basis. Create reports and schedules of trademarks for agreements. Understanding corporate entity structure and an ability to disseminate the correct ownership of the IP portfolio. Should have 3-5 years of experience as a trademark paralegal, preferably in an in-house legal department in the consumer products and/or retail industry working with a large portfolio of brands both U.S. and international. Working knowledge of a docketing system with knowledge of PATTSY WAVE a big plus. Must have ability to manage a large workflow of trademark matters (U.S. and International) and an inherent ability to prioritize matters. Knowledge of filing any 44(d), 44 (e) and Madrid Protocol 66 (a) trademark application filings a plus. Should have experience with Copyright, Patent and Domain Name matters.
Job ID: 5054. Send resume.
Company infoSara Kim