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Years of Experience
Date Last Verified
Paralegal - Associate (Trademark) The candidate prepares and files trademark applications; drafts responses to office actions issued by United States Patent and Trademark Office trademark examiners; investigate third party rights and identify options for resolving any conflicts; defend applications against oppositions; provides required proof of use documents obtained from business groups. Reviews Official Gazette weekly to ID 3rd-party applications or supplemental registrations that might violate our trademark rights; reviews trademark notices daily to ID 3rd-party applications that might violate our trademark rights; identifies legal bases for challenging identified applications or supplemental registrations; determines whether we have required evidence to oppose identified applications or supplemental registrations; recommends whether to oppose identified applications; instructs outside counsel to oppose applications that attorneys determine should be opposed; responds to Customs Inspector inquiries regarding suspect product at U.S. or foreign borders. Reviews and comments on consent, settlement, and co-existence agreements; drafts consent, settlement, and co-existence agreements. Verifies existence of trademark rights desired to be licensed; conducts clearance searches needed for trademark licenses; obtain registrations needed for trademark licenses; prepares trademark schedules for license agreements; drafts customs authorization letters needed by licensees or their contract manufacturers. Approves outside counsel, investigator, and other vendor invoices and code them for accounting; establishes and maintains relationships with outside counsel in multiple foreign jurisdictions; investigates potential firms and recommend who to hire. Maintains integrity of information in database relating to ownership rights and due dates; prepares Web TMS reports; searches information in Web TMS database to answer questions; verifies details and due dates for each case record inherited from other firms' systems; runs reports for business management information and decisions. Responsible for answering questions from Corporate Legal Department and from operating divisions; keeps up with product developments in the company and the industry; keeps up with changes in trademark law throughout the world; researches and compiles information pertaining to U.S. and international trademark rights, procedural matters, and case law; establishes correspondence and telephone conferences with clients, outside counsel, opposing counsel, and trademark examiner; reviews products, advertising and packaging to ensure proper use of trademarks; prepares status summary reports for clients' trademarks; provides client training and education on specific trademark issues; performs other projects as assigned. Must have 2+ years of experience. Should have Associates or Bachelor of Arts Degree (Bachelor of Arts Degree preferred) and paralegal certification.
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