Senior Manager Intellectual Property Paralegal

New York, NY

A well-known global apparel company has an exciting opportunity for a motivated and professional Senior Manager Intellectual Property Paralegal with 15+ years of experience to support our Legal Department full-time.  This position is a key part of the legal team that supports the apparel company’s global brand and intellectual property groups.  The individual will focus on helping oversee and manage U.S. and international trademark portfolios with specific experience in trademark clearance, prosecution, oppositions, enforcement, investigations and litigations.

The successful candidate will possess excellent communication skills and the ability to understand and effectively deal with a variety of legal issues relating to management and protection of the apparel company’s IP assets worldwide.  This position works closely with the Head of Legal Operations and other legal and business professionals and communicates regularly with outside parties.  Good interpersonal and organizational skills, proactive attitude, enthusiasm, attention to detail and a sense of humor are paramount.  A passion for IP and brand protection is a plus.  Extensive knowledge of foreign and domestic trademark law, regulations, policies and processes to prosecute trademark applications and oppositions required.

What you will be doing

• Prepare, file and prosecute domestic trademark applications, statements of use, extensions of time, amendments, Sections 8, 9 & 15 declarations, etc. (including electronic filing through TEAS);
• Assist with TTAB proceedings and trademark litigation, including drafting and filing of documents, and maintaining pleadings and discovery files;
• Perform trademark searches for potential domestic and foreign trademarks and risk assessment;
• Review watch notices for potential conflicts and attorney discussion;
• Prepare, file and prosecute foreign trademark applications (e.g. Madrid Protocol International Registrations, community and local trademark filings, declarations of use, assignments, change of address, custom recordals, notarization and legalization of documents);
• Coordinate with foreign counsel regarding foreign prosecution, opposition and cancellation proceedings;
• Perform the collection of evidence and supporting documents; and respond to communications or correspondence from clients, outside counsel, foreign counsel and other parties;
• Manage global IP registration renewals;
• Serve as the back-up to manage and maintain all Intellectual Property docketing through electronic software and calendars, including generating reports, inputting information and assuring data integrity;
• Coordinate customs recordals worldwide;
• Create IP reports on a regular schedule and as requested by legal team; and
• report current status of global IP portfolio to General Counsel and legal team. 

What we want you to bring

• Bachelor’s Degree or Paralegal certificate from accredited program;
• 15+ years of international trademark experience at a law firm or corporate law department (in-house fashion experience preferred) as a paralegal handling high-level responsibilities on large volume portfolios, managing process and workflow of worldwide trademark filings, prosecution and renewals;
• Strong academic credentials;
• Detailed-oriented, self-starter, problem-solver, strong analytical, organizational, and case management skills;
• Ability to work independently, consistently plan, organize, think critically, meet deadlines and remain flexible in a multi-task and fast-pace environment;
• Excellent verbal, written communication and interpersonal skills with clients, outside counsel, foreign counsel and other parties;
• Demonstrated ability to take ownership, personal responsibility for performing tasks and resolving issues;
• Skilled in handling day to day trademark prosecution and conducting online trademark searches;
• Extensive knowledge of foreign and domestic trademark law, regulations, policies and processes to prosecute trademark applications required;
• Proficiency with MS Office products, particularly MS Excel, Word, PowerPoint and Adobe Acrobat;
• Experience working with Customs/Law Enforcement and or investigators;
• Familiarity with WebTMS or other trademark management system, Saegis and Gmail desired; and
• Proficiency with WestLaw or similar legal research software preferred. 

What we will bring

• A fun and dynamic work environment built on teamwork, flexibility and respect;
• The ability to work on interesting and novel matters relating to protecting and enforcing IP; and
• Professional growth and development to help advance your career.