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Trademark Paralegal

Shift Description

Job ID P138037

TRADEMARK PARALEGAL Align Technology, Inc.

City/Country: San Jose, California

Align Technology is a global medical device company dedicated to transforming lives by improving the journey to a healthy, beautiful smile.  The innovative, custom Invisalign clear aligner product is sold in over 100 countries.  Align also manufactures and markets the iTero Element digital scanner.  The company employs more than 6,000 people.

Currently, we have an opening for a full time Trademark Paralegal.  The position will be based in San Jose, California.

JOB SUMMARY:

The Trademark Paralegal reports to the Global Portfolio Manager and will assist with the enforcement, prosecution and maintenance of Align’s global trademark portfolio.  The Trademark Paralegal is expected to perform responsibilities to achieve high quality work product in both appearance and substance, and to take proactive steps to perform the below responsibilities.  This position works closely with the trademark team to analyze complex legal issues and execute strategic solutions.

ESSENTIAL DUTIES & RESPONSIBILITIES

  • Provide day-to-day support for trademark and advertising enforcement matters, including with customers.
  • Provide trademark support for U.S. and International trademark prosecution and maintenance.
  • Provide due diligence trademark support as needed.
  • Assist with domain name related matters issues. 
  • Provide support for Trademark Trial and Appeal Board (TTAB) oppositions and cancellation proceedings and appeals, as well as international oppositions and other enforcement actions, including the collection and preparation of evidence.
  • Provide ready reference and substantive research assistance to Global Portfolio Manager and attorneys.
  • Assist with preparation and filing of copyright applications.

In general, the Trademark Paralegal is responsible for supporting the day-to-day administration of the company’s trademark group.  Specific responsibilities include:

GENERAL

  • Draft routine cease & desist letters.  Track cease & desist matters.
  • Conduct, order, review and analyze trademark search reports.
  • Prepare and file trademark applications, extensions of time, statements of use, combined affidavits, renewals, and routine documents with the U.S. Patent and Trademark Office (PTO). 
  • Communicate with foreign counsel regarding international trademark prosecution and maintenance. Prepare trademark authorization letters to foreign counsel.
  • Assist with trademark specimen collection and preparation of foreign authorization letters.
  • Process the execution of legal documents.
  • Exercise good judgment in trademark monitoring and watch notice review.
  • Manage docket and deadlines for assigned tasks. Review and clear the trademark docket for deadlines associated with U.S. and International prosecution and maintenance of trademark applications and registrations, as well as TTAB and enforcement related actions.
  • Prepare status reports for trademark, copyright and related matters.
  • Maintain an agenda of items for discussion at monthly trademark meetings.
  • Assist with transfer of trademark records to digital format.
  • Provide assistance to Global Portfolio Manager and attorneys in all aspects of IP/Trademark practice.
  • Ability to design and execute data/document management procedures and reports.
    Support Global Portfolio Manager in matter management.
    Use appropriate tools to analyze, identify, and resolve problems.
    Stay current on emerging tools, techniques, and technologies.
  • Support group administration including meetings and travel planning.
  • Participate as member of the trademark team.
  • Other duties as assigned.

REQUIREMENTS

  • Bachelor's degree, paralegal certificate, or equivalent combination of education and work experience
  • Excellent organizational, time management, and project management skills
  • Strong attention to detail
  • Effective written and spoken communication skills
  • Minimum 1 year of experience as a paralegal
  • Trademark experience preferred
  • Law Firm Experience preferred
  • Experience with international trademark practices and laws (including Madrid filings)
  • Demonstrated ability to collaborate and work as part of a team, as well as the ability to work independently and balance competing priorities
  • Medical device and/or in house experience is a plus

Work in San Jose

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