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In-House
Legal Staff
Intellectual Property - Trademark/Copyright
Min 5 yrs required
Lead, Intellectual Property and Product Paralegal Responsibilities: Prepare and file trademark filings, including via the Madrid Protocol. Manage payments of foreign renewal and maintenance fees through CPA Global. Support and assist with US and foreign trademark litigation and trademark office proceedings, including collection and review of documents and other materials. Review and analyze trademark watch notices and report to trademark attorneys. Assist with preliminary and online investigations into potential trademark infringements. Assist with drafting legal documents, including cease and desist letters, fame affidavits, and Notices of Opposition. Conduct and analyze U.S. and international product clearance screenings to determine the availability of proposed trademarks, taglines, product names, and other consumer-facing content. Communicate with internal clients regarding proper use of trademarks and other intellectual property in marketing materials and placement on products. Review packaging, point-of-sale, digital content and marketing materials to provide intellectual property clearance and confirm compliance with applicable laws and regulations. Manage domain name acquisitions, registrations and renewals. Record registrations with appropriate domestic and foreign customs and enforcement agencies. Liaise with outside law firms, vendors, and internal business partners as needed for pending prosecution and enforcement matters, including requesting periodic status updates and ensuring that the docket is updated accordingly. Initiate and conduct meetings with attorneys as needed to advise of status and other issues relevant to pending prosecution and enforcement matters. Handle document execution by internal clients and related notarization, legalization and other certifications; arrange delivery of documents to foreign counsel.
Qualification and Experience
Qualifications: Undergraduate degree from 4-year college or university required, legal courses a plus. Commissioned Notary Public a plus. Must have 5 years of experience in-house or law firm focusing on trademark law; patent and/or advertising experience a plus. Paralegal experience preferred. Research experience including electronic legal research. Knowledge and experience with electronic matter management systems and with trademark docketing systems (FoundationIP preferred, or others that may include CPI, PATTSY). Proficiency with Microsoft programs, including Word, Excel, Outlook and PowerPoint. Willingness to learn additional skills such as familiarizing with products to comply with product regulatory requirements and coordinating review across various business units; Track and respond to Global product regulatory requirements; and Assist with other administrative tasks, as needed. Strong project management abilities and organizational skills. Strong communication skills. Superior analytic and writing skills. Exceptional attention to detail with ability to manage multiple priorities . The ability and willingness to take initiative to address problems and make continuous process improvements.
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