Senior Trademark Paralegal – Contract – 100% Remote
Web ID: SF222040
City: Remote
State: Remote
Compensation: $46.00 - $55.00/hour
Education: Bachelors Degree
Summary:
Trademark Team of global healthcare leader has an opportunity for a Remote Contract Intellectual Property Trademark Paralegal to help the group over the next 6 – 12 months. Will contribute by working towards the successful resolution of trademark matters and adding value to the company’s trademark portfolio.
Job Description:
- Screen, search, and clear proposed trademarks.
- Conduct foreign and domestic trademark clearance searches to determine the availability of trademarks, including online searching and working with foreign agents
- Create summary reports and draft clearance opinions on a global basis
- Instruct filing of trademark applications
- Manage process and workflow of worldwide trademark filings, prosecution, renewals, and conflicts (oppositions, cancellations, infringements, UDRPs, and counterfeits)
- Act as the first line of communication for trademark prosecution, escalating matters to the managing attorney as well as relaying his/her instructions to outside counsel
- Coordinate the annual renewal activity for trademark registrations worldwide for a specific business unit
- Managing trademark disputes through coordination with managing attorney, outside counsel, and local affiliate
- Docket management for the critical deadline as well as for status updates
- Review invoices and either approve for payment or reject to the vendor with appropriate explanation
- Assist in trademark budget planning and cost management for the specific business unit
- Assist in the monitoring of outside docketing system for correct docketing of all actions
- Screen, search, and clear proposed trademarks.
- Conduct foreign and domestic trademark clearance searches to determine the availability of trademarks, including online searching and working with foreign agents
- Create summary reports and draft clearance opinions on a global basis
- Instruct filing of trademark applications
- Manage process and workflow of worldwide trademark filings, prosecution, renewals, and conflicts (oppositions, cancellations, infringements, UDRPs, and counterfeits)
- Act as the first line of communication for trademark prosecution, escalating matters to the managing attorney as well as relaying his/her instructions to outside counsel
- Coordinate the annual renewal activity for trademark registrations worldwide for a specific business unit
- Managing trademark disputes through coordination with managing attorney, outside counsel, and local affiliate
- Docket management for the critical deadline as well as for status updates
- Review invoices and either approve for payment or reject to the vendor with appropriate explanation
- Assist in trademark budget planning and cost management for the specific business unit
- Assist in the monitoring of outside docketing system for correct docketing of all actions
Job Requirements: Required
- Bachelor’s Degree and relevant legal education (Paralegal Certificate)- preferred
- Generally, 2+ years of trademark paralegal experience
- Familiarity with docketing systems such as WebTMS or IP Manager
- Familiarity with third party trademark screening tools such as Corsearch or Clarivate
Preferred
- Ability to handle a portfolio of 5000+ active trademarks
- Ability to collaborate with multiple stakeholders
- Ability to handle and prioritize multiple projects and manage deadlines in a fast-paced environment
- Ability to handle multiple projects in a fast-paced environment
- Collaborates in legal matters in the area of responsibilities
- Attention to detail, sound judgment, and solid organizational skills
Required
- Bachelor’s Degree and relevant legal education (Paralegal Certificate)- preferred
- Generally, 2+ years of trademark paralegal experience
- Familiarity with docketing systems such as WebTMS or IP Manager
- Familiarity with third party trademark screening tools such as Corsearch or Clarivate
Preferred
- Ability to handle a portfolio of 5000+ active trademarks
- Ability to collaborate with multiple stakeholders
- Ability to handle and prioritize multiple projects and manage deadlines in a fast-paced environment
- Ability to handle multiple projects in a fast-paced environment
- Collaborates in legal matters in the area of responsibilities
- Attention to detail, sound judgment, and solid organizational skills