IP Paralegal and Administrator (Legal)
SUMMARY
Perry Ellis International, a fashion and lifestyle company, seeks an exceptional Intellectual Property Paralegal and Administrator to provide outstanding support, primarily relating to managing a trademark portfolio, in an extremely lean and busy Legal Department. The successful candidate will work closely and collaboratively in a fast-paced environment with the department's attorneys.
DUTIES AND RESPONSIBILITIES:
- Preparation of domestic trademark applications, renewals, extensions of time, affidavits of use, and other tasks, including.
- Assisting attorneys in preparation of documentation for U.S. office action responses and/or oppositions;
- Drafting some responses for attorney review and timely submitting responses to the USPTO
- Prosecution and maintenance of foreign trademark applications and registrations.
- Powers of Attorney
- Legalization procedures
- Prosecution of oppositions/cancellations/investigations in connection with trademarks.
- Gathering evidence and related materials.
- Preparing reports re worldwide status of marks.
- Preparation and recordal of name changes, assignments, foreign use and registration
- Monitor trademark infringement using CSC
- Creation and maintenance of records in trademark databases (WebTMS)
- Conduct high volume knock-out searching to initially determine availability of marks (inclusive of design marks).
- Manage international clearance searching, draft opinion letters with foreign counsel
- Docketing records for all trademark matters (including all enforcement matters)
- Preparation of biweekly, quarterly, six month and annual computer docket/status reports
- Review, code and approval of invoices.
- Draft simple agreements such as NDAs, customs letters/trademark authorization letters, etc.
- Liaison with internal business clients concerning the foregoing.
- Ensure accuracy of and maintain contracts database with all license, settlement, coexistence, etc. agreements.
- Maintain copyright, domain, patents and other IP rights, as requested.
- Other projects, including administrative tasks, as assigned by the attorneys.
SKILLS, KNOWLEDGE, AND ABILITIES:
- Tech-savvy individual, with advanced experience in all Google Docs, Google Drive, Microsoft applications (Word, Outlook, Excel, PowerPoint), PDFs, WorkShare Compare, scanning, etc.
- Effective organizational skills required, strong attention to detail, excellent oral, written and interpersonal communications skills and emotional intelligence are essential.
MINIMUM REQUIREMENTS:
- Clear and demonstrated understanding and experience with U.S. trademark law. Candidates with experience in managing patent portfolios only will not be considered.
- Bachelor's Degree preferred but not required and minimum 5+ years in a large law firm or fashion company law department.
- Professional demeanor and ability to be discreet and maintain confidentiality at all times
- Strong time management skills (proven abilities to prioritize tasks, multitask, meet deadlines, work independently, proactively and reliably)
- Ability to build and maintain business relationships and be calm and flexible under pressure and amidst changing priorities
- Unmatched work ethic
- A fun, can-do, cheerful, collaborative attitude
