Trademark Paralegal

Aug 31, 2023
Sep 28, 2023
Contract Type

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, CA or Lake County, IL 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.

Minimum Education:

  • 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.
  • Applicable only to applicants applying to a position in any location with pay disclosure requirements under state or local law:

    The compensation range described below is the range of possible base pay compensation that the Company believes in good faith it will pay for this role at the time of this posting based on the job grade for this position. Individual compensation paid within this range will depend on many factors including geographic location, and we may ultimately pay more or less than the posted range. This range may be modified in the future.

    We offer a comprehensive package of benefits including paid time off (vacation, holidays, sick), medical/dental/vision insurance and 401(k) to eligible employees.

    This job is eligible to participate in our short–term incentive programs.

    Note: No amount of pay is considered to be wages or compensation until such amount is earned, vested, and determinable. The amount and availability of any bonus, commission, incentive, benefits, or any other form of compensation and benefits that are allocable to a particular employee remains in the Company's sole and absolute discretion unless and until paid and may be modified at the Company's sole and absolute discretion, consistent with applicable law.

    AbbVie is committed to operating with integrity, driving innovation, transforming lives, serving our community, and embracing diversity and inclusion. It is AbbVie's policy to employ qualified persons of the greatest ability without discrimination against any employee or applicant for employment because 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, status as a protected veteran, or any other legally protected group status.