Senior Paralegal - Intellectual Property & Trademarks

Job Description
RESPONSIBILITIES AND DUTIES
(25%) Trademark/Domain Name Portfolio Management and Protection:
Protect intellectual property rights through trademark and services mark/Domain Name filings, renewals, oppositions, appeals, cancellations and prosecution of infringers.
Develop and implement strategy for international trademarks, service marks, trade names and domain name protection.
Maintain Trademark and Domain Name Databases through a docketing system and prepare monthly summary reports.
(20%) Trademark and Domain Name Development:
Conduct trademark and domain name searches and prepare clearance reports to help determine mark availability in existing and new markets.
Help educate team members on proper trademark use, trademark selection and trademark protection.
(10%) Registration Requirements:
Maintain intellectual property rights through the preparation and recording of registered user/licensing agreements, status reports and declarations of use.
Report preparation for quarterly compliance obligations under the Asset-Backed Securitization Agreement.
(10%) Litigation:
Analyze and assist with outstanding trademark infringement litigation and cancellation actions, including following up with foreign counsel, monitoring litigation, preparing cease and desist letters, litigation summaries and implementing actions.
Analyze incoming watch notices, conduct risk assessment, work with in-house counsel to determine appropriate action, follow-up with foreign counsel, monitor, and track cases.
Identify and file oppositions to intellectual property infringement on social media platforms.
(10%) Marketing:
Review new product and marketing campaign IP issues/clearances.
Review advertisements, promotions, and contracts for attorney final review.
(5%) Patent:
Maintain and track company patents and patent information.
(15%) Licensing:
Develop and implement a licensing function to authorize vendors to utilize Domino’s intellectual property.
Oversight for license agreements
Review samples and validate trademark usage by 3rd parties.
(5%) Invoicing
Review and record invoices;
prepare invoice summaries and send them for approval. Review and track IP budget. Provide support to Finance team.