IP Paralegal and Administrator at Perry Ellis International Inc. in Miami, Florida

Posted in Legal 15 days ago.

Type: Full-Time





Job Description:

SUMMARY

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

    • Legalization procedures


  • 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.

MINIMUM REQUIREMENTS:


  • 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

  • Unmatched work ethic

  • A fun, can-do, cheerful, collaborative attitude

See Job Description