Trademark Paralegal Iii

POSITION:          Trademark Paralegal III

JOB POSTING:   66940 (JNJNJP00066940)

LOCATION:        Client Site, New Brunswick NJ, or Remote

PART TIME:        25 hours per week

COMPENSATION:  The hourly rate is a maximum range of $43.00 to $47.00 for approximately 25 hours per week.

JOB DESCRIPTION/EXPERIENCE: 

The position will assist in the management of U.S. and foreign trademark portfolios which will include clearance, prosecution, maintenance, and enforcement, including the following:
Key Responsibilities:
• Execute domestic and international searches, including preliminary trademark screens and evaluation of full search results, to determine availability and scope of potential rights.
• Prepare and file domestic trademark applications and instruct international agents to initiate new filings and manage prosecution of applications through registration.
• Correspond with internal business clients on a variety of trademark issues; solicit and review opinions of outside counsel to make recommendations regarding office actions, oppositions, cancellations and infringement actions.
• Review packaging, websites, advertising copy and evidence of use; liaise with business partners regarding the same.
• Review trademark watch notices and conduct online research in developing recommendations for enforcing trademarks.
• Maintain trademark deadlines and the portfolio management database, including data entry, docket review and preparation of reports for attorneys and business units.
• Assist attorneys with gathering documents and evidence in support of trademark oppositions, cancellations, or other legal actions; prepare and review drafts of settlement agreements, coexistence agreements, letters of consent, undertakings, licenses, registered user agreements and other domestic and international agreements.
• Provide support and due diligence in connection with M&A and other transactional matters.
Qualifications:
• A minimum of an associate degree, paralegal certification, or equivalent work experience is required; a bachelor’s degree is preferred.
• A minimum of 3-5 years of experience as a Trademark Paralegal required and in-house experience preferred.
• Experience in the pharmaceutical, medical device, or healthcare field is preferred.
• Possesses firm understanding of domestic and international laws, regulations, and procedures relating to trademark prosecution and conflict matters is required.
• Experience and basic knowledge in using SAEGIS or Corsearch Advantage, trademark portfolio management databases, document management systems, and electronic USPTO filings are required.
• Strong attention to detail, organizational, analytical, and planning skills, in addition to excellent written and verbal communication skills are required.
• Proficiency with Microsoft Office (Word, Outlook, PowerPoint and Excel) is required.
• The successful candidate should be extremely motivated and energetic, with a demonstrated ability to collaborate and work as part of a team, as well as the ability to work independently and balance competing priorities.

All candidates shall be legally authorized to work in the US and are subject to background screening, drug testing and verification of legal status in the United States using eVerify.