Company Info: Jobs
Reports to: Intellectual Property Counsel and Director of Brand Protection
Date: August 2014
Location: Ventura, CA
To apply, email Email your résumé with cover letter and voluntary identification form to Ventura Jobs. Download the Voluntary Self Identification Questionnaire
The IP Paralegal will manage transactional and intellectual property matters, draft and maintain trademark applications/registrations, IP license agreements, and various other aspects of the Company’s trademark, copyright and domain name portfolios. The ideal candidate will play a central role in keeping the trademark and contract operations/activities organized, on track and moving forward.
Essential Job Functions:
• Maintenance of the trademark portfolio and the prosecution and enforcement of trademarks, copyrights and domain names.
• Receive trademark search requests from clients, conduct on-line trademark screening searches, evaluate results and report preliminary opinion to clients regarding availability of mark(s) for use and/or registration. Order and review full trademark searches, investigate relevant listings for details of use, evaluate results of searches and investigations, and draft opinion memos to clients regarding availability of mark(s) for use and/or registration.
• Prepare and filing trademark, service mark and copyright applications.
• Prepare and filing Section 8 & 15 affidavits, renewals, assignments, change of names, and responses to office actions.
• Prepare and review Notices of Opposition, Petitions for Cancellation, Extensions of Time to Oppose and Extensions of Discovery.
• Assist with investigation of third party uses of marks.
• Prepare cease and desist letters. Prepare and maintain charts and reports of status of trademarks, copyrights, and enforcement actions.
• Draft various agreements, including license agreements, distribution agreements, amendments and general contracts.
• Assist in negotiating and drafting IT contracts.
• Support in-house and outside counsel in connection with Company’s litigation matters.
• Assist as needed and with corporate work. Provide general administrative support and work on special projects as needed.
• Must be able to sit for extended periods of time.
• Must be able to stand for extended periods of time.
• Ability to look at a computer screen for extended periods of time.
• Ability to maintain a composed and professional demeanor within a flexible and (at times noisy) work environment.
• Must be able to travel domestically and internationally utilizing various transportation methods.
Minimum Job Qualifications:
• College degree or paralegal degree/certificate required
• Minimum 5-10 years’ experience as a IP Paralegal or IP Legal Assistant in a law firm or law department; in-house experience preferred
• Basic knowledge of contract negotiations highly desirable
• Experience searching and clearing trademarks and maintaining trademark database
• High Level Proficiency in Word and Excel
• Excellent written and oral communication skills required
• Must be able to proofread, edit and compose letters and other documents
• Strong organizational skills and ability to prioritize and multi-task
• Solid interpersonal and teamwork skills
• Ability to work independently with minimal supervision
• Ability to work in a fast-paced and challenging environment
• Desire to learn and develop new skills
• Strong follow-up skills and attention to detail
It is the responsibility of every employee to contribute to a positive work environment through cooperative and professional interactions with co-workers, customers and vendors.
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