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SR. TRADEMARK PARALEGAL

Company: Avalign Technologies NGInstruments
Location: San Jose
Posted on: July 15, 2019

Job Description:

SR. TRADEMARK PARALEGAL Align Technology, Inc. City/Country: San Jose, California or Raleigh, North Carolina Align Technology is a global medical device company dedicated to transforming lives by improving the journey to a healthy, beautiful smile. The innovative, custom Invisalign clear aligner product is sold in over 120 countries. Align also manufactures and markets the iTero Element digital scanner. The company employs more than 11,000 people. Currently, we have an opening for a full time Sr. Trademark Paralegal. The position will be based in San Jose, California or in Raleigh, North Carolina. JOB SUMMARY: The Sr. Trademark Paralegal will exercise independent judgment and bring superior organization and analytical skills to the enforcement, prosecution and maintenance of Align s global trademark portfolio. The Sr. Trademark Paralegal is expected to perform responsibilities to achieve high quality work product in both appearance and substance, and to take proactive steps to perform the below responsibilities, and to set goals and timelines to achieve desired outcomes. This position works closely with the responsible in-house Global Trademark Counsel, Global Portfolio Manager and regional attorneys, and also with outside counsel, in analyzing complex legal issues and executing strategic solutions. ESSENTIAL DUTIES & RESPONSIBILITIES Collaborate and consult with the trademark and advertising team, taking steps to bring complex enforcement actions with customers and third parties to successful conclusions. Write customer communications about proper brand usage and adherence to Brand Guidelines. Independently manage all phases of US and international trademark prosecution, including initial filings or filing instructions, Statements of Use, foreign office actions and renewals. Lead the global ecommerce brand enforcement effort, with vendor support. Conduct in-depth research and apply critical thinking skills in the management of oppositions, cancellation proceedings and appeals, both in the US and abroad, as well other enforcement actions. Respond to requests for evidence collection, including in foreign jurisdictions, with support of the regional teams. Provide ready reference and substantive research assistance to Global Trademark Counsel, Global Portfolio Manager and regional attorneys; responsible for various projects as assigned. Prepare and file copyright applications. In general, the Sr. Trademark Paralegal is responsible for supporting the day-to-day administration of the company s trademark group. Specific responsibilities include: GENERAL Conduct, review, analyze and report on trademark clearance search reports. Draft cease & desist letters, license agreements, copyright permissions and other IP documents. Prepare and file trademark applications and other documents with the U.S. Patent and Trademark Office ( PTO ). Analyze and prepare detailed written responses to foreign office actions; communicate with foreign counsel regarding trademark prosecution and maintenance. Process legal documents execution and legalization (Powers of Attorney, Declarations, etc.) Exercise good judgment in trademark monitoring and watch notice review. Manage the docket. Maintain an agenda of items for discussion at monthly trademark meetings. Create processes and procedures to store trademark records and trademark specimens to a digital library. Facilitate all aspects of in-house trademark practice by providing professional insights and offering ready assistance to Global Trademark Counsel and Global Portfolio Manager. Support matter management, independently and proactively handling designated matters and seeing them through to completion. Use appropriate tools to analyze, identify, and resolve problems; adeptly resolve a wide range of legal and administrative issues. Stay current on emerging tools, techniques, and technologies. Participate as an active and contributing member of the Trademark team. Other projects as assigned. REQUIREMENTS * * Bachelor's degree, paralegal certificate, or equivalent * Excellent organizational, time management, and project management skills * Strong attention to detail * Effective written and spoken communication skills, including the ability to work with internal and external partners to gather feedback and opinions * Minimum 6 years experience as a paralegal * Minimum 3 year of trademark experience * Law Firm Experience preferred * Experience with international trademark practices and laws (including Madrid filings) * Experience conducting trademark clearance searches * Experience with docketing procedures and systems * Familiarity with domain registration and enforcement * Demonstrated ability to collaborate and work as part of a team, as well as the ability to work independently and balance competing priorities * Medical device and/or in house experience is a plus * Experience with Excel, Adobe Acrobat Pro and/or Photoshop are also a plus We are an equal opportunity employer. All applicants will be considered for employment without attention to race, color, religion, sex, sexual orientation, gender identity, national origin, veteran or disability status. We also respect your privacy. Our Applicant Privacy Policies can be found here: ***********************************

Keywords: Avalign Technologies NGInstruments, San Jose , SR. TRADEMARK PARALEGAL, Legal , San Jose, California

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