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    Trademark Paralegal

    Spectrum Brands
    Middleton, WI 53562
    Full-time, Part-time
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    Job Description

    Division Information

    Spectrum Brands utilizes a Shared Services model that enables resources to be leveraged across the organization. The Shared Services team is made up of information technology, human resources, indirect sourcing, finance & accounting professionals that support all business units. Shared services teams are headquartered in Middleton, Wisconsin but have members across the country.

    Job Summary

    As a member of the professional legal staff, contributes general knowledge and skill in Intellectual Property to support IP team and/or Law Department objectives. Generally works both independently and under close supervision, as appropriate, and within well-established guidelines to complete routine and other tasks.

    Primary Duties & Responsibilities
    • Receive trademark search requests from clients, conduct on-line trademark screening searches, evaluate results in consultation with the attorney 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 in consultation with the attorney, and draft opinion memos to clients regarding availability of mark(s) for use and/or registration.
    • Handle all aspects of U.S. trademark prosecution and maintenance, including maintenance of files, consulting with attorneys as appropriate, preparation and filing of applications, Office Action responses, ITU-related documents (e.g., Statement of Use), and Post Registration documents (e.g., Sections 8, 9, and/or 15 Affidavits).
    • Oversee filing and maintenance of international trademark applications and registrations, including maintenance of files; reviewing and evaluating and consulting with the attorneys regarding correspondence from foreign counsel and drafting responses to same; gathering and providing foreign counsel with information/documentation necessary to prosecute/maintain trademark applications and registrations and respond to Office Actions.
    • Prepare Assignments of trademark registrations and applications and file same with PTO Assignment Branch.
    • Oversee execution and legalization of documents (such as Trademark Assignments and Powers of Attorney) for submission in international trademark matters.
    • Obtain copyright registrations, monitor for infringement, and provide appropriate licenses.
    • Investigate possible infringements and draft cease and desist or inquiry letters when appropriate.
    • Oversee the progress of IP administrative proceedings and disputes, including maintenance of files and databases; consulting with the attorneys as appropriate; reviewing and evaluating correspondence from US and foreign counsel and drafting responses to same; and gathering and providing foreign counsel with information/documentation and other evidence relevant to the dispute.
    • Receive requests from clients for IP input on licenses and other agreements, review agreements and recommend revisions to relevant IP language, and update and/or maintain related files and databases, including records for the Company's international trademark licenses and the recordation of related extracts.
    • Enter and update data in IP databases and generate database reports as needed.
    • Field inquiries from clients regarding various trademark/copyright and other IP issues; report status of IP matters to clients.
    • Create and maintain paper and computer files of IP records, correspondence and documents.
    • Draft legal correspondence and memoranda for attorney review.
    • Review outside counsel and other vendor invoices for accuracy and process payment of same.
    • Assist with due diligence and other intellectual property issues related to deals, agreements, and other transactional matters.
    • Respond to, solve and make decisions on standard/routine business requests with limited risk.
    • Responsible for own work and contributing to team, department and/or business results.
    • Perform other duties and special projects as requested; may involve handling confidential and sensitive material.
    • Proactively manage work; works with limited supervision on some tasks and closer supervision on others, as appropriate.
    Education and Experience Profile

    • Bachelor's Degree or equivalent qualifying work experience required; certificate from an ABA-approved paralegal program helpful but not required.

    • Minimum of 3+ years of substantive and applicable experience as a trademark/copyright paralegal performing the specific functions set forth herein in a law firm or corporate law department; hands-on experience in managing international trademark portfolios is preferred but not required.

    Required Skills

    • Demonstrated ability to develop and implement process improvement.

    • Ability to work independently and as part of a team.

    • Ability to manage multiple tasks well under pressure.

    • Level of expertise/knowledge to manage tasks that have a broad and direct impact on business.

    • Display a thorough understanding of the business environment and the ability to apply sound business judgment consistent with corporate mission, vision and values.

    • Ability to structure complex projects efficiently and set/adjust priorities effectively; superior attention to detail; excellent judgment and use of discretion.

    • Diligence, dependability and strong work ethic.

    • Superior organizational and interpersonal skills.

    • Excellent written and oral communication skills.

    • Proficiency with USPTO on-line filing procedures.

    • Proficiency with an online trademark database (e.g., CORSEARCH or SAEGIS) and LEXIS/NEXIS.

    • Proficiency with a trademark records database (e.g., ANAQUA).

    Work Environment

    Working conditions are normal for an office environment.

    The above information on this description has been designed to indicate the general nature and level of work performed by employees within this job/classification. It is not designed to contain or be interpreted as a comprehensive inventory of all duties, responsibilities, and qualifications required of employees assigned to this job.

    Spectrum Brands is an Equal Employment Opportunity/Affirmative Action employer.


    Posting ID: 549036827Posted: 2020-07-14