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Sr. Trademark Paralegal

Williams Mullen Clark Dobbins PC
Richmond, VA
  • Expired: over a month ago. Applications are no longer accepted.
Job Description

Williams Mullen is seeking a paralegal with trademark experience to join our Trademark Practice as a Senior Trademark Paralegal. The Sr. Trademark Paralegal will help manage and oversee the company's IP portfolio and will assist with IP protection, litigation, and licensing matters, with an emphasis on trademarks. The Sr. Trademark Paralegal will serve as the liaison between in-house/outside counsel and various company functions and business units and will have primary responsibility for maintaining the IP portfolio. This role will require a high level of critical thinking, initiative and the ability to work independently, to take ownership of the role, and to use good judgment and discretion to address issues without supervision.
 
Essential Duties and Responsibilities


Trademark Prosecution

  • Pro-actively manage global trademark portfolio including:
    • Ensure docketing deadlines are met in a timely manner; routinely review monthly docket and anticipate work required to meet deadlines.
    • Coordinate, draft and prepare trademark applications, renewals, statements of use.
    • Obtain filing details and evidence in support of statements of use, renewals, and office action responses.
  • Maintain and update records in docketing database.
  • Assist in trademark filing strategy discussions and related due diligence.
  • Assist with trademark clearance projects, including U.S. screening and full searches, drafting search opinions, and communicating results to business.
  • Coordinate with foreign counsel and outside counsel on international clearance, filing, maintenance and renewal matters:
  • Arrange for execution of formal documents required for trademark administration including brand authorization letters, powers of attorney, statements of use and renewals.


Trademark Enforcement:

  • Research potential trademark and copyright enforcement matters, including initial review of watchlist notices; preparing and submitting online takedown notices; and assisting attorneys with cease and desist letters.


IP Infringement Claims:

  • Assist counsel in investigating and litigating trademark and related infringement claims.
  • Assist with issuance of litigation hold notices and coordination of e-discovery.
  • Assist with certain litigation tasks and deadlines


Licensing:

  • Track lifecycle of and compliance with license agreements.
  • Manage submissions of any required royalty payments and reports.


Additional Responsibilities:

  • Review and respond to correspondence in a timely manner.
  • Prepare and file federal, state and international trademark, service mark applications and copyright applications.
  • Prepare and assist with the filing of certain responses to Office Actions, post registration filings such as 8 & 15 Affidavits, and renewal applications assignments. 
  • Prepare and forward standing reporting letters to clients.
  • Conduct and analyze computer research of U.S. and foreign databases. 
  • Assist in due diligence projects; research, prepare, and update trademark status reports; communications with U.S. Trademark Office examiners and other personnel (e.g., Assignment Branch and Madrid Protocol Division) and communications with Examiners at WIPO (World Intellectual Property Organization).
  • Prepare and file assignments in connection with business acquisitions; assist attorneys in the maintenance of foreign trademark matters including the prosecution of applications; prepare foreign filing instruction communications; liaison between attorneys and foreign associates (attorneys). 
  • Handle documents that require authentication/legalization in foreign countries; verify and comply with foreign filing requirements and oversee the timely filing of formal documents, as well as collecting/overseeing documentation from clients. Manage the IP email in-box; communicate regularly with and maintain professional relationships with key business and marketing teams, internal legal department, and outside counsel.
  • Review and analyze correspondence from foreign associates, and communicate with attorneys and clients throughout the entire prosecution of an application as well as during the maintenance of the foreign application and registration. 
  • Prepare communications, research and assist attorneys with trademark assignments and name/address change records in foreign countries; follow-up with assignments/records until completed. Help establish IP policies, procedures, and standard operating practices.
  • Assist IP attorneys and other legal team members in execution of day-to-day IP and Legal matters.
  • Upload documents and emails in shared filing system.

 

Education and Experience

  • Bachelor's degree preferred and/or related paralegal certificate preferred.
  • Minimum ten (10) years of experience in trademark portfolio management and prosecution.
  • Solid knowledge of U.S. trademark prosecution procedures and basic trademark law and ability to relay to business functions.
  • Strong written and verbal communications skills and ability to interact with various departments and levels of management.
  • High level of critical thinking, initiative, and ability to work independently, take ownership, and use judgment and discretion to address issues without supervision.
  • Strong organizational skills and attention to detail and accuracy.
  • Capable of handling a large volume of work; sharp sense of priorities and good time management.
  • Experience with Intellectual Property docketing systems and particularly CPI

Williams Mullen Clark Dobbins PC

Address

Richmond, VA
23219 USA

Industry

Legal

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