The Trademark Paralegal is responsible for the management and support of clearance, prosecution and enforcement related to AbbVie’s global trademark portfolio. This position works closely with the responsible in-house trademark attorneys in analyzing complex legal issues, developing and executing strategic solutions while acting as a liaison with business units and outside counsel worldwide. This position will be based in our Irvine office with a hybrid work model (onsite 3+ days/week).
Core Job Responsibilities:
- Manage filing and maintenance of domestic and international trademark applications, recordal of assignments, renewals, office actions and new filings, including management of docket to ensure all deadlines are met.
- Communicate directly with business units concerning current use of trademarks and obtain evidence in support of use.
- Review correspondence from foreign counsel, prepare draft responses for attorney review, and communicate instructions to agents regarding office actions and other requests.
- Communicate with foreign agents and the USPTO regarding status.
- Assist in US and foreign trademark searches, including online searching to determine the availability of trademarks and prepare summaries for in-house counsel.
- Monitor watch notices and assist with opposition/conflict proceedings and organize evidence in support of such conflicts.
- Coordinate trademark file transfers and prepare necessary documentation in connection with trademarks portfolio acquisition and divestitures.
- Oversee execution and legalization of documents such as trademark assignments, powers of attorney, consents, etc., for submission in international trademark matters.
Position Accountability / Scope:
- Must be self-motivated, detail-oriented with high work standards.
- Excellent organizational, interpersonal, and oral and written communication skills.
- Frequently handles confidential or business-sensitive information with a high level of discretion, maturity and ethical integrity.
- Must be able to prioritize, meet deadlines and be flexible to adapt to changing organizational needs.
- Demonstrates strong leadership competencies.
- Bachelor’s Degree and/or Paralegal Certificate.
Minimum Experience/ Training Required:
- 4+ years of trademark experience.
- Extensive knowledge of domestic and international regulations, policies and processes related to trademark prosecution.
- Proficiency in using Microsoft Word, Excel and PowerPoint applications.
- Knowledge and proficiency with trademark databases and docketing programs, particularly the TM Cloud docketing system, preferred.
At AbbVie, we value bringing together individuals from diverse backgrounds to develop new and innovative solutions for patients. As an equal opportunity and affirmative action employer, we do not discriminate on the basis of race, color, religion, national origin, age, sex (including pregnancy), physical or mental disability, medical condition, genetic information, gender identity or expression, sexual orientation, marital status, protected veteran status, or any other legally protected characteristic. If you would like to view a copy of the company’s affirmative action plan or policy statement, please email CorpJat_ABV@abbvie.com.
Significant Work Activities: N/A
Job Type: Experienced