Job Posting: Trademark Paralegal – Cypress, CA

Vans, a division of VF Outdoor, Inc., seeks a junior to mid-level trademark paralegal to join its Legal Department. Position is full time in Cypress, California reporting to the Manager of Intellectual Properties.

Job Description/Responsibilities:

  • Conduct preliminary domestic and international trademark searches and summarize search results using Saegis.
  • Prepare and file domestic applications and work with outside counsel on foreign trademark applications; work with business unit to obtain product samples and other support for trademark applications and to document use.
  • Prepare and assist with filing responses to office actions, Statement of Use, Extension of Time and 8 & 15 affidavits.
  • Organize, maintain and manage trademark docket and database.
  • Handle trademark renewals once renewal instructions are established.
  • Assist with the development of reports and presentations with regards to the patent, trademark and copyright portfolios.
  • Maintain communication with internal and external contacts, including outside counsel, representatives of other companies in the industry, and other parties as needed.
  • Review trademark watch notices using Saegis and present concerns to Manager for further action.
  • Monitor and investigate possible new matters and gather relevant information for Manager review.
  • Purse and maintain most current knowledge of company business and products.
  • Maintain domain name portfolio including registrations and transfers.
  • Assist with other IP matters as needed, including preparing copyright applications and performing other special projects and related duties that may include reviewing and analyzing marketing, counterfeit and anti-piracy work, promotional materials, sweepstakes, events and other materials for compliance with marketing and intellectual property laws, industry standards, internal guidelines and policies; assisting attorneys in review of product designs; providing support for various other projects relating to marketing and/or intellectual property legal matters

Requirements:

  • At least three to five years of experience as a trademark paralegal in a law firm or law department; corporate experience preferred
  • Knowledge and understanding of issues and procedures associated with Intellectual Property (patents, trademarks, copyrights and domain names)
  • Solid interpersonal and teamwork skills
  • Must be able to manage client’s expectations in a demanding environment
  • Knowledge of WebTMS or similar docketing database
  • Knowledge of Saegis or similar trademark search and watch database
  • Ability to work independently with minimal supervision
  • Solid written and oral communication skills
  • Strong organizational skills and ability to prioritize and juggle multiple tasks
  • Ability to work in a fast-paced and challenging environment
  • Flexibility and positive attitude
  • Desire to learn and develop new skills
  • Computer word processing, database and spreadsheet skills
  • College degree and paralegal degree/certificate required
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