Paralegal I, Trademark Docketing – Global Intellectual Property Practice

Location
Bethesda, Maryland (US)
Salary
70K
Posted
Aug 10, 2023
Closes
Oct 03, 2023
Position
Paralegal
Contract Type
Full-Time, Hybrid, Permanent

Job Description

Job Number 23131721
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 assists and supports the Global IP Practice as the paralegal primarily responsible for handling day-to-day docketing and updates to the records, databases and files maintained by the Practice. This position works under close supervision or within well-established guidelines to complete routine tasks. Additional duties will include drafting standard legal documents, correspondence and business communications, managing inbound communications from the USPTO, processing trademark registration certificates, supporting management of trademark portfolios and IP disputes, gathering and managing evidence for use in trademark registration and enforcement, obtaining signatures and assisting with formalities/legalizations for documents upon request, and other general duties to support the Practice, attorneys and more senior paralegals. This position is located in the Law Department in Bethesda and reports to a Senior Paralegal – Global Intellectual Property. 

 

Specific Job Summary 

 

The primary responsibilities of this position include the following:

 

  • Serve as primary point of contact responsible for day-to-day docketing and updates to the records, databases and files maintained by the Practice, including (1) Timely enter and update data and records in trademark database and other databases used by the IP practice, (2) Track/monitor appropriate deadlines and generate reports as requested or appropriate, (3) Manage the inbox maintained by the Practice for official correspondence with the USPTO and review and process inbound communications, (4) Process and docket trademark registration certificates, renewal certificates and other official documents, (5) Create and maintain files (electronic, with paper files where originals need to be maintained) and update records in relevant databases, (6) Open, review, distribute, and save printed and electronic correspondence, including trademark registration certificates and renewal certificates, into e-files, printed files and database as needed or appropriate.

 

  • Correspond with outside and local/international counsel concerning ongoing matters under the direction of more senior paralegals and attorneys and field inquiries from clients regarding various trademark/copyright issues.

 

  • Periodically review the docketing guidelines and best practices with supervision of more senior paralegals and/or attorneys and update the materials and manuals maintained by the Practice.

 

  • Assist with or handle various portfolio management tasks, including trademark searches, gathering evidence and specimens, update/maintain related files and databases, and handle various other tasks for of U.S. and international prosecution and maintenance of trademark applications and registrations.

 

  • Assist with or handle various tasks for IP disputes, including factual/evidentiary investigation and research, and update/maintain related files and databases.

 

  • Assist with or handle various tasks for licenses, license recordals and other agreements, and for other trademark/copyright and other IP matters, in consultation with the more senior paralegals or attorneys as appropriate, and update/maintain related files and databases.

 

  • Other duties as necessary such as: (1) Prepare summaries and status reports for review of in-house counsel and/or for clients or outside counsel, (2) Draft legal correspondence and documents for paralegal or 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, (6) Assist with obtaining signatures and with formalities/legalizations for documents, and (7) Perform other duties or special projects as requested including general administrative support. 

  Candidate Profile

 

Successful candidates should possess knowledge and experience as follows:

 

Required:

  • Two year college degree and 
  • Minimum relevant work experience of one year.

 

OR

  • Four year college degree

 

OR

  • At least five years of relevant work experience as a paralegal

 

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); 
  • Experience in a billing database (e.g., Serengeti/Legal Tracker) preferred; 
  • Flexibility for overtime.