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Senior Paralegal
3 months ago
RESPONSIBILITIES AND DUTIES
(25%) Trademark/Domain Name Portfolio Management and Protection:
- Protect intellectual property rights through trademark and services mark/Domain Name filings, renewals, oppositions, appeals, cancellations and prosecution of infringers.
- Develop and implement strategy for international trademarks, service marks, trade names and domain name protection.
- Maintain Trademark and Domain Name Databases through a docketing system and prepare monthly summary reports.
(20%) Trademark and Domain Name Development:
- Conduct trademark and domain name searches and prepare clearance reports to help determine mark availability in existing and new markets.
- Help educate team members on proper trademark use, trademark selection and trademark protection.
(10%) Registration Requirements:
- Maintain intellectual property rights through the preparation and recording of registered user/licensing agreements, status reports and declarations of use.
- Report preparation for quarterly compliance obligations under the Asset-Backed Securitization Agreement.
(10%) Litigation:
- Analyze and assist with outstanding trademark infringement litigation and cancellation actions, including following up with foreign counsel, monitoring litigation, preparing cease and desist letters, litigation summaries and implementing actions.
- Analyze incoming watch notices, conduct risk assessment, work with in-house counsel to determine appropriate action, follow-up with foreign counsel, monitor, and track cases.
- Identify and file oppositions to intellectual property infringement on social media platforms.
(10%) Marketing:
- Review new product and marketing campaign IP issues/clearances.
- Review advertisements, promotions, and contracts for attorney final review.
(5%) Patent:
- Maintain and track company patents and patent information.
(15%) Licensing:
- Develop and implement a licensing function to authorize vendors to utilize Domino’s intellectual property.
- Oversight for license agreements
- Review samples and validate trademark usage by 3rd parties.
(5%) Invoicing
- Review and record invoices; prepare invoice summaries and send them for approval. Review and track IP budget. Provide support to Finance team.
Qualifications
- Minimum BA or BS, with additional paralegal degree or equivalent experience
- Minimum 5- 7 years’ experience in intellectual property and trademarks, as a paralegal
- Proven ability to use analytical skills and judgment to create practical alternatives and solutions to legal/IP issues
- Ability to manage multiple assignments with minimal supervision and in a timely manner
- Excellent interpersonal and problem-solving skills and abilities
- Excellent written and verbal communication skills
- Excellent organizational skills
Additional Information
All your information will be kept confidential according to EEO guidelines.