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Job Opening

Job Title: Intellectual Property (IP) Paralegal

Company: Clark Associates, Inc.

Clark Associates is seeking an experienced Intellectual Property Paralegal who will work closely with the General Counsel on trademark, copyright and patent matters. The successful candidate will play a critical role in creating and managing the trademark portfolio, and coordinating and handling a variety of IP-related administrative services, so dedication, an eye for detail, and communications skills are essential.

As IP Paralegal, your primary responsibilities will be:

  • Trademark Clearance
    • Perform and review trademark searches, including preliminary trademark screenings
    • Order and assist in analysis of search reports
  • Trademark Prosecution, Opposition & Enforcement
    • Manage key aspects of U.S. trademark prosecution and maintenance matters
    • Assist in the selection of in-house trademark docketing system
    • Prepare trademark applications and other trademark prosecution documents for filing at appropriate trademark offices, including gathering all necessary information regarding same
    • Communicate with and draft correspondence to outside counsel and foreign associates
    • Proactively manages trademark prosecution docket, ensuring all deadlines are met in a timely manner, communicates calendar and docket updates to attorney
    • Monitor external usage of trademarks through trademark watch notices, brand monitoring searches and services from third-party vendors
    • Protect trademark, domain name and social media portfolio through assistance in identification of inappropriate use, preparation of cease and desist letters, take down notices, assertions of infringement and related correspondence
    • Assist in domestic opposition, cancellation, litigation and enforcement
    • Identify need for international protection
  • Copyright Administration (Protection & Enforcement)
    • Demonstrate knowledge of US Copyright Law
    • Assist with filing US Copyright Applications through Eco (Electronic Copyright Registration System)
    • Enforce copyrights through assistance in identification of inappropriate use, preparation of cease and desist letters, take down notices, assertions of infringement and related correspondence
  • General
    • Conduct research on U.S. and international trademark and copyright law as requested
    • Conduct factual research into third-party activity which may infringe company’s IP rights
    • Use Corsearch, IP management software (docketing software) and various rights databases to conduct research
    • Assist in tracking of outside counsel billing and invoices
    • Manage special projects as assigned
    • Perform other related duties as needed or assigned

The ideal candidate will meet the following minimum requirements:

  • College Degree or paralegal certification required
  • 5+ years of experience working in an IP prosecution environment within a law firm or in-house
  • Clear and demonstrated understanding and experience with U.S. trademark law. Candidates with experience in managing patent portfolios only will not be considered.
  • Experience with Corsearch or similar trademark databases
  • Committed to keeping abreast of changes in USPTO rules and procedures
  • Current experience managing trademark docketing and management system
  • Familiarity with searching patent databases is a plus
  • Tech-savvy individual with knowledge of and experience in Google Docs, Google Drive and Microsoft Office Suite (Excel, Outlook, PowerPoint, Word), PDFs and scanning
  • Strong written and verbal communication skills
  • Organized, detail-oriented, and able to stay on-task
  • Effective team contributor; ability to work independently
  • Self-motivated, exercise sound judgement, and demonstrate effective planning, problem-solving and analytical skills
  • Able to manage multiple and varied projects in a timely and effective manner
  • Unmatched work ethic
  • A fun, can-do, cheerful, collaborative attitude

We offer competitive compensation and a comprehensive benefits package including paid time off, medical/dental insurance, 401k with company match, wellness programs, and gym membership reimbursement.

Our Lancaster headquarters features an on-site fitness center and cafeteria. If you’re ready for a challenge, and have the ambition to succeed in a fast-paced, growing industry, we’d love to discuss this position with you!