Paralegal II

About the role

This Trademark Paralegal contractor position supports AbbVie's trademarks, assisting attorneys with trademark filings, maintaining records, supporting trademark-related disputes, and ensuring support with legal and procedural requirements. The role involves extensive interaction with outside counsel, internal employees, and high-level management.

Key Responsibilities

• Coordinate and organize documentation and information requests related to trademark disputes.
• Assist attorneys in case preparation, fact finding, and investigation activities, including conducting comprehensive trademark searches using USPTO and other trademark databases.
• Prepare and file trademark prosecution documents, such as new applications, declarations of use, and gather specimens for submission to the US Patent and Trademark Office and other agencies.
• Retrieve and review trademark dockets to ensure accurate activity tracking and deadline management.
• Prepare communications, including cease & desist letters and email correspondence, related to trademark searches and disputes.
• Respond to document requests or inquiries related to trademark matters from both internal and external parties.
• Liaise regularly with outside law firms, internal employees, and senior management in trademark dispute matters.
• Conduct online research and trademark database searches.

Required Qualifications

• 4-year bachelor's degree or Paralegal Certificate from an ABA-certified program.
• At least five years of experience in trademark prosecution, including preparation and submission of documents to the US Patent and Trademark Office.
• Ability to draft concise communications relevant to trademarks (such as Cease & Desist letters and emails to outside counsel).
• Strong skills in conducting trademark searches and database research, with familiarity in USPTO and major trademark searching platforms.
• Demonstrated ability to retrieve, review and analyze trademark dockets.
• Experience preparing declarations of use and gathering specimens for trademark offices.
• Strong verbal communication, negotiation, and interpersonal skills for effective collaboration with various stakeholders.
• Strong writing and analytical skills for drafting, reviewing, and preparing legal documents independently.
• Highly organized, excellent project management, and multitasking abilities to meet deadlines and manage multiple files.
• Proficiency with database management, Excel, and legal software packages.
• Able to handle routine and increasingly complex problems independently, proposing solutions to attorneys or supervisors where appropriate.

Skills

• At least five years of trademark prosecution experience (preparation of documents for submission to US Patent and Trademark Office).
• Ability to draft concise and effective communications (such as cease & desist letter, email to outside counsel).
• Ability to conduct trademark search (familiarity with searching at USPTO database).
• Ability to retrieve and review trademark docket.

Schedule

• Hybrid: Tuesday, Wednesday, Thursday onsite; Monday and Friday remote.
• Shift: M-F

Pay

$36.76/hr., on W2