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!