Senior Paralegal, Intellectual Property (Trademark)

ESSENTIAL DUTIES AND RESPONSIBILITIES

  • Trademark Portfolio Support. Actively contribute to the Company’s trademark procurement efforts. Serve as the Company’s primary point-of-contact for outside trademark counsel in regard to the filing and prosecution of the Company’s trademark applications, renewals, etc. Receive communications from outside counsel, reviewing same for actions to be taken and work with in-house counsel to ensure that actions are taken within specified due dates. Work with business unit leaders and/or marketing teams to determine renewals of trademarks and to locate specimens of use, etc., necessary for trademark applications, renewals, etc.  Accountable for managing the trademark renewal process within specified deadlines.  Track cost and expenses for trademark filings and maintenance and provide this information to in-house attorneys. Update assignment data, as appropriate, for acquired trademark registrations.  Responsible for docketing trademark matters and deadlines.
  • Trademark Searches and Opinion. Conduct preliminary trademark searches. Possess knowledge of U.S. trademark law and international trademark law in order to be able to provide an initial analysis of clearance searches and to summarize that preliminary view to the in-house attorney.  Provide a draft opinion letter for review and completion by in-house attorney. 
  • Marketing and Advertising Review. Under the supervision of in-house counsel, and with feedback from the corporate Marketing teams, review product/service advertising materials, labels, literature and promotional content to ensure proper trademark usage and avoidance of third-party rights.
  • Training. Provide support to the marketing teams in the way of answering trademark-related questions, providing guidelines and FAQ documents as a reference that the business can refer to.  Help to develop an operating procedure for marketing and advertising reviewers to follow prior to submitting to IP Legal for review, effectively reducing the need to rely on IP Legal for input on each literature and promotional item. 
  • Trademark Opposition Support. Manage the trademark alerts provided by an outside service; work with in-house attorneys to review which trademarks should be added to the watch list.  When an alert is received, work with in-house attorney to determine whether an opposition or other course of action is required. Manage oppositions when initiated and monitor the status, providing updates to in-house attorney on a regular basis.
  • Increasing Effectiveness. Actively contribute toward the IP team’s goals of reducing total outside expenses while increasing the efficiency and practicality of the team’s interactions with the business units. Maintain current understanding of US law and USPTO regulations in regard to intellectual property issues affecting the Company’s business strategies.  Provide ways to improve our internal trademark process through OpEx and/or Legal Lean initiatives.  Provide support to in-house attorneys by completing appropriate trademark activities and initial research before turning it over to the attorney for review and completion.
  • Image Request Support.  Provide support for responding to external image requests, such as from book publishers, to use our copyrighted images.  Review the requests with the appropriate in-house attorney and provide the permission to the requester per Cardinal Health guidelines.

SUPERVISORY RESPONSIBILITIES (NO DIRECT REPORTS)

May have responsibility for supervising certain activities of law clerks, legal assistants and outside counsel.

EDUCATION, EXPERIENCE AND OTHER QUALIFICATIONS

  • Bachelor’s degree, associate’s degree or paralegal certificate is preferred.
  • 4-7 years experience as a trademark paralegal in a law firm or corporate law department.  Extensive experience with all aspects of USPTO trademark work (prosecution, registration, and renewals).  Knowledge of U.S. and international trademark filing practices and procedures; knowledge of trademark goods/services specifications.
  • Computer Skills: Requires thorough knowledge and proficiency with trademark searching software such as Corsearch as well as general web-based searching tools.  Requires a high degree of proficiency in computerized searching strategies.  Possess advanced word processing skills and computer skills that may include utilizing advanced functions in a spreadsheet. Familiarity with product lifecycle management tools, such as Agile, is preferred.
  • Experience with intellectual property docketing systems, preferably CPI, as well as with the general workflows (and responsibilities) of an intellectual property procurement team, are required.
  • Excellent communication/presentation skills, highly organized, motivated, creative and possessing a keen attention to detail.  Ability to work independently.
  • Travel: Some travel may be required (1-2 trips per year).