Perry Ellis International, a fashion and lifestyle company, seeks an exceptional Intellectual Property Paralegal and Administrator to provide outstanding support, primarily relating to managing a trademark portfolio, in an extremely lean and busy Legal Department. The successful candidate will work closely and collaboratively in a fast-paced environment with the department’s attorneys.
DUTIES AND RESPONSIBILITIES:
Preparation of domestic trademark applications, renewals, extensions of time, affidavits of use, and other tasks, including.
Assisting attorneys in preparation of documentation for U.S. office action responses and/or oppositions;
Drafting some responses for attorney review and timely submitting responses to the USPTO
Prosecution and maintenance of foreign trademark applications and registrations.
Powers of Attorney
Prosecution of oppositions/cancellations/investigations in connection with trademarks.
Gathering evidence and related materials.
Preparing reports re worldwide status of marks.
Preparation and recordal of name changes, assignments, foreign use and registration
Monitor trademark infringement using CSC
Creation and maintenance of records in trademark databases (WebTMS)
Conduct high volume knock-out searching to initially determine availability of marks (inclusive of design marks).
Manage international clearance searching, draft opinion letters with foreign counsel
Docketing records for all trademark matters (including all enforcement matters)
Preparation of biweekly, quarterly, six month and annual computer docket/status reports
Review, code and approval of invoices.
Draft simple agreements such as NDAs, customs letters/trademark authorization letters, etc.
Liaison with internal business clients concerning the foregoing.
Ensure accuracy of and maintain contracts database with all license, settlement, coexistence, etc. agreements.
Maintain copyright, domain, patents and other IP rights, as requested.
Other projects, including administrative tasks, as assigned by the attorneys.
SKILLS, KNOWLEDGE, AND ABILITIES:
Tech-savvy individual, with advanced experience in all Google Docs, Google Drive, Microsoft applications (Word, Outlook, Excel, PowerPoint), PDFs, WorkShare Compare, scanning, etc.
Effective organizational skills required, strong attention to detail, excellent oral, written and interpersonal communications skills and emotional intelligence are essential.
Clear and demonstrated understanding and experience with U.S. trademark law. Candidates with experience in managing patent portfolios only will not be considered.
Bachelor’s Degree preferred but not required and minimum 5+ years in a large law firm or fashion company law department.
Professional demeanor and ability to be discreet and maintain confidentiality at all times
Strong time management skills (proven abilities to prioritize tasks, multitask, meet deadlines, work independently, proactively and reliably)
Ability to build and maintain business relationships and be calm and flexible under pressure and amidst changing priorities