Trademark Brand Paralegal
New Brunswick; Fort Washington; Skillman, United States
The Trademark Paralegal will assist in the management of U.S. and foreign trademark portfolios which will include clearance, prosecution, maintenance, and enforcement, including the following:
- 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 the 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.
- A minimum of Associate’s degree or equivalent
- A minimum of six years of experience as a trademark paralegal
- A minimum of four years of experience as an in-house trademark paralegal for a corporation or business
- A minimum of four years of experience as a trademark paralegal handling consumer health brands (either in-house or at a law firm)
- Possesses a thorough understanding of domestic and international laws, regulations, and procedures relating to trademark prosecution and conflict matters
- Proficiency and expertise with using docketing systems and document management systems (such as Memotech, Workbench, and First to File)
- Proficiency in using Clarivate trademark search tools, including SAEGIS and TMgo365, as well as reviewing and reporting relevant watch notices
- Proficiency preparing trademark applications, extensions of time, statements of use, renewals, and, other trademark prosecution and maintenance documents
- Proficiency using the TEAS, TTABVUE, and other electronic systems for prosecuting U.S. trademark applications at the USPTO and on the USPTO.gov website
- Experience ordering and reporting full trademark availability searches for multi-national projects involving multiple marks in multiple countries
- Experience conducting preliminary trademark screens and creating reports on research results for purposes of trademark clearance or trademark prosecution strategy
- Experience with the copy review process, including the review of marketing materials, labeling, and websites, identifying trademark issues and clearance opportunities
- Experience working with outside counsel, reviewing correspondence, summarizing action items, and ng recommendations to attorney supervisors, adding value to all correspondence
- Experience working directly with business clients, including performing intake of new search projects, answering questions about search results, and providing training and guidance in the trademark search, clearance, prosecution, and renewals process
- Experience supporting acquisitions and divestitures, including the preparation of trademark charts, conflicts, agreements, and disputes, and the preparation of and filing of trademark assignment documents relating to the same
- Strong attention to detail, organizational, analytical, and, planning skills, in addition to excellent written and verbal communication skills
- Proficiency with Microsoft Office (Word, Outlook, PowerPoint, and, Excel).
- 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.
- Paralegal certificate
- Four years of experience with the Johnson & Johnson consumer health brands
About the Organization
Caring for the world, one person at a time has inspired and united the people of Johnson & Johnson for over 125 years. We embrace research and science — bringing innovative ideas, products, and services to advance the health and well-being of people.
With $82.1 billion in 2020 sales, Johnson & Johnson is the world’s most comprehensive and broadly based manufacturer of healthcare products, as well as a provider of related services, for the consumer, pharmaceutical, and medical devices markets. Employees of the Johnson & Johnson Family of Companies work with partners in health care to touch the lives of over a billion people every day, throughout the world.
If you have the talent and desire to touch the world, Johnson & Johnson has the career opportunities to help make it happen. Thriving on diverse company culture, celebrating the uniqueness of our employees, and committed to inclusion. Proud to be an equal opportunity employer. Johnson & Johnson is the world’s most comprehensive and broadly-based healthcare Company, touching the lives of nearly a billion people every day. Our Family of Companies throughout the world compete in consumer, pharmaceutical, and medical devices & diagnostics markets and have the skills and resources to tackle the world’s most pressing health issues.
Johnson & Johnson announced plans to separate our Consumer Health business to create a new publicly traded company. The process of the planned separation is anticipated to be completed within 24 months, and it will be subject to legal requirements including consultation with works councils and other employee representative bodies, as required, and other customary conditions and approvals.
It is anticipated that, following the conclusion of the transaction, this position may be conveyed with New Consumer Health. In that case, details of any planned changes would be provided to the successful candidate by New Consumer Health at an appropriate time and would be subject to any necessary consultation processes.
How to Apply
Please follow the link below.
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