Paralegal II

Position Title: Paralegal II - Trademark Paralegal

Work Location: Irvine, CA, 92612 /North chicago, IL 60064

Assignment Duration: 12 months (possible extension- performance based)

Work Arrangement: Hybrid

Position Summary: The team is looking for a Trademark Paralegal with approximately 3-5 years of experience in this specific role. The role supports both trademark prosecution and enforcement.

Background & Context: The role supports trademark matters for products that may be sold in the US and worldwide, with responsibilities split by product within our organization.

Key Responsibilities:

* On the prosecution side, the person will prepare and submit trademark filings with the US Patent Office and communicate with the company's lawyers across countries.

* On the enforcement side, the person will support enforcement of key brands and other brands, assist with preliminary investigations, prepare enforcement findings/reports, and take a first cut at drafting cease-and-desist letters.

* The role supports trademark matters for products that may be sold in the US and worldwide, with responsibilities split by product.

* The position is expected to be more prosecution-heavy than enforcement-heavy.

* Prosecution responsibilities include trademark clearance searches, preparing reports, preparing drafts for clients, providing advice on trademark use, and crafting responses to clients.

* Prosecution filings are prepared under the guidance of an attorney. The paralegal prepares the draft, sends it to the lawyer for review, and the lawyer reviews and signs off.

* Enforcement responsibilities may include investigating misuse of trademarks, cybersquatting on domain names, unauthorized sales, look-and-feel-alike products/packaging, and matters identified through customs reports.

* The role involves communication and coordination with lawyers across different countries and with outside counsel.

Qualification & Experience:

* Candidates should have approximately 3-5 years of experience in a trademark paralegal role. Candidates with less than 5 but more than 3 years of experience should definitely be considered.

* Candidates should have the ability to independently draft and write, investigate matters, and prepare written reports.

* Candidates should have experience with trademark prosecution, including preparing and submitting trademark filings with the US Patent Office.

* Candidates should have experience relevant to trademark enforcement, including investigations and drafting cease-and-desist letters. * A paralegal certificate is mandatory, or a Bachelor's degree/equivalent.

* Experience with the IP Folio system is a bonus.

* Experience with the Questel annuity system is relevant.

* In-house experience is a bonus.

* Experience with international/worldwide trademark matters would be extremely helpful.

* Pharma background would be a significant bonus, particularly experience understanding both how in-house counsel operates and how the pharma business operates.

* Trademark docketing experience is not very critical because there is an independent docketing function. Docketing experience is a bonus but is not the core responsibility.

* The current role covers trademarks and copyrights. Patent experience is outside the scope, although a mixed profile is not a negative if the candidate understands docketing, preparation, and communication with outside counsel.