Paralegal II, Trademark Portfolios – Global Intellectual Property Practice

Location
Bethesda, MD
Salary
78K - 80K
Posted
Aug 10, 2023
Closes
Oct 03, 2023
Position
Paralegal
Contract Type
Full-Time, Hybrid, Permanent

Job Number 23131702
Job Category Legal
Location Marriott International HQ, 7750 Wisconsin Avenue, Bethesda, Maryland, United States VIEW ON MAP
Schedule Full-Time
Located Remotely? N
Relocation? N
Position Type Management

JOB SUMMARY

Marriott International operates, licenses and franchises hotels and licenses vacation ownership resorts and branded residential properties globally. The Marriott Law Department and the Global Intellectual Property (IP) practice group service the Company's lodging and hospitality business. 

As a member of the professional staff, this paralegal position contributes general knowledge and skill in Intellectual Property and related fields to assist and support the Global IP Practice, manages multiple trademark portfolios, supports IP disputes, drafts standard legal documents, correspondence and business communications, handles assigned database docketing tasks, and other duties to support the Practice, attorneys and more senior paralegals. This position generally works both independently and under close supervision, as appropriate, and/or within well-established guidelines to complete routine and other tasks. This position is located at Marriott International headquarters in Bethesda, MD and reports to a Vice President & Senior Counsel – Global Intellectual Property.

Specific Job Summary 

The primary responsibilities of this position include the following: 

  • Manage multiple international trademark portfolios, including (1) Implementing the Company strategy while focusing on hotel development and Company goals for the brand; (2) Working with outside U.S. and/or international trademark counsel; and (3) Updating and/or maintaining related files and databases.
     
  • As part of the portfolio management, (1) Manage all IP deadlines and consult regularly with the Practice Group attorneys on the progress of portfolio matters; (2) Manage U.S. and international trademark searches in conjunction with outside and/or local counsel; (3) Handle U.S. prosecution and maintenance of trademark applications and registrations, including reviewing and/or leading the preparation and filing of applications, Office Action responses, ITU-related documents (e.g., Statement of Use), renewals and other Post Registration documents; (4) Oversee international counsel’s filing and maintenance of international trademark applications, registrations and renewals; (5) Maintain and/or support/assist with docketing and maintenance of files and database records; and (6) Prepare draft assignments of trademark registrations or applications and handle/supervise filings with USPTO/other jurisdictions.
     
  • Oversee the progress of and deadlines for IP disputes primarily within the assigned portfolios, including factual/evidentiary investigation and research, docketing and maintenance of files and databases, consulting with the attorneys as appropriate, reviewing and evaluating correspondence from U.S. and foreign counsel and drafting responses to same, and gathering and providing foreign counsel with information/documentation and other evidence relevant to the dispute.

 

  • Receive and respond to requests from clients for IP input and/or handling of matters involving licenses, license recordals, other agreements, and other trademark/copyright and other IP issues, all in consultation with the attorneys as appropriate and all with corresponding docketing or maintenance of related files and databases.

 

  • Review and process outside counsel and other vendor invoices in the Law Department’s e-billing program in accordance the Global IP Group protocols, including approving invoices within the range of authority for the position pursuant to Law Department and Global IP Group guidelines and corresponding with outside and local/international counsel concerning billing matters.

 

  • Oversee, support and /or handle, as needed, the execution, notarization and apostille or legalization of documents (such as Powers of Attorney, witness statements, agreements, assignments, and other legal documents) for submission in international and domestic trademark matters, including tracking and following up on the documents in process, as appropriate, and researching and remaining up to date on legal requirements and formalities for the signature and formalities processes.

 

 

 

 

 

 

  • Create and maintain files (electronic, with paper files where originals need to be maintained) and update records in relevant trademark databases, including opening, reviewing, distributing and saving printed and electronic correspondence, certificates, etc., into e-files, printed files and database as needed or appropriate.

 

  • Other duties as necessary such as: (1) Prepare summaries or reports for review of in-house counsel and/or for clients or outside counsel; (2) Draft legal correspondence and documents for attorney review; (3)Assist with due diligence and other intellectual property issues related to contracts, agreements, and other transactional matters; (4) Assist with and / or coordinate meetings with clients and outside counsel; (5) Assist with and/or  handle updating IP Group printed and/or electronic reference materials and resources; and (6) Perform other duties or special projects as requested. 

 

 

Candidate Profile

Successful candidates should possess knowledge and experience as follows:

Required:

  • Two year college degree and 
  • Minimum relevant work experience of three years as a trademark/copyright paralegal or equivalent experience handling trademark/copyright paralegal-level tasks.

 

OR

  • Four year college degree and
  • Minimum relevant work experience of one year as a trademark/copyright paralegal or equivalent experience handling trademark/copyright paralegal-level tasks.

 

OR

  • At least ten years of relevant work experience as a trademark/copyright paralegal or equivalent experience handling trademark/copyright paralegal-level tasks

 

Has basic subject matter paralegal experience; Paralegal Certificate preferred but not required.

 

  • Ability to work independently and as part of a team and to manage multiple tasks well under pressure. 
  • Ability to structure complex projects efficiently and set/adjust priorities effectively; 
  • Excellent written and oral communication skills – superior attention to detail; 
  • Ability to keep sensitive information confidential - Excellent judgment and use of discretion; 
  • Diligence, dependability and strong work ethic; 
  • Superior organizational and interpersonal skills; 
  • Experience in a trademark database (e.g., CPI) and a billing database (e.g., Serengeti/Legal Tracker) preferred. 
  • Flexibility for overtime.