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Senior Trademark Paralegal

Date: Feb 20, 2019

Location: Northridge, CA, US

Company: HARMAN International

Requisition Id : 113629 

Additional Work Location(s) ​​​​​:  

Position Summary:

The position will help in maintaining and growing Harman’s worldwide trademark, design patent portfolio and assist with brand enforcement.

 

Supervisory Responsibilities:

N/A

 

Job Responsibilities:  

  • Work with our in-house counsel and play a fundamental role in our law department maintaining and growing all global trademark matters including trademark  renewals, trademark searching, trademark policing, trademark monitoring, prosecution, opposition, cancellation, conflict and anti-counterfeiting matters.
  • Coordinate and communicate with in-house domestic and international subsidiaries/business units from all divisions on trademark matters including but not limited to proper trademark use in advertising, packaging, manuals, promotional materials, prosecution of trademarks, opposition/cancellation matters, trademark clearance, and budgets.
  • Coordinate and communicate with in-house domestic and international subsidiaries/business units on design patent matters including but not limited to reviewing design disclosures, supervising new design patent filings and prosecution.
  • Coordinate and communicate with outside domestic and international counsel on trademark and design patent matters.
  • Prepare legal documents for domestic and international matters.
  • Prepare and file documents with the U.S. Patent and Trademark Office.
  • Perform and review trademark searches and clearance.
  • Perform internet research projects and other special projects as requested.
  • Prepare and supervise domestic and international trademark filings.
  • Assist with review of watch notices.
  • Assist with administrative duties including filing, opening general matter and trademark dockets, updating spreadsheets and database and scanning/uploading documents.
  • Gather and organize evidence of use for various domestic and international trademarks.
  • Attend and participate in docket meetings, conference calls, meetings with business units and counsel. 
  • Assist counsel with trademark agreements, cease and desist letters, letters of consents, and assignments.
  • Assist in managing the domestic and international anti-counterfeiting program including drafting cease and desist letters, assisting with settlement negotations, identifying key targets, conducting customs trainings, preparing customs training guides, product verification and w assist the internal teams wi
  • Coordinate team of domestic and international investigators and law firms engaged in the monitoring of counterfeits in the marketplace.
  • Assist with tracking and reporting of all offline and online anti-counterfeiting actions, including maintenance of database and other documents for internal and external business partners.
  • Assist with marketing matters including reviewing and preparing releases or other agreements related to rights of publicity, advertising, and social media.
  • Assist with preparing and reviewing IP licensing agreements and contract negotiation process.
  • Assist with IP due diligence.
  • Special trademark and design patent projects.

 

Basic Qualifications:

  • Candidates must have a strong trademark background.
  • Solid domestic and international trademark
  • Solid design patent experience preferred.
  • Solid on-line research skills and knowledge of on-line trademark search databases including Saegis.
  • Experience filing electronic documents with the PTO.
  • Experience with anti-counterfeiting issues preferred. 
  • Must be willing to take initiative to ensure completion of task.
  • Computer proficient, with knowledge of Microsoft Word, Excel and Access.
  • Good oral and written communication skills, and excellent organizational skills 
  • Must be proactive, organized, detail oriented and demonstrate accuracy and consistency.
  • Self-starter, must be able to manage high volume, complex projects, meet deadlines and prioritize workload.
  • Accustomed to working in a changing environment and able to work independently with minimal supervision.
  • Must have good interpersonal skills and be able to work independently as well as closely with team members.
  • Paralegal License and Attestation Certificate

 

 

Preferred Qualifications & Desired Competencies: Please list the preferred qualifications and ideal behaviors needed for this position based on the following:

 

Leadership: Demonstrate character, clarity, courage and commitment to high-performance

  • Build environment of trust, high performance and engagement by establishing clear goals and a commitment to feedback, development and recognition

 

Change Orientation: Champion a better, faster and simpler way of doing things

  • Apply original thinking and continuous improvement to processes, products, systems or services and manage change to better serve customer needs

 

Collaboration:  Connect, engage and communicate with others

  • Encourage open expression of ideas; communicate effectively at all levels and build strong relationships

 

Judgment: Make sound decisions

  • Demonstrate critical thinking to take appropriate risk and make sound and timely decisions

 

Results-Driven: Deliver extraordinary results

  • Take initiative to achieve superior, quality results against internal or external standards of excellence

 

Eligibility Requirements:

  • Willingness to travel.
  • Willingness to work in an office in Northridge, CA.
  • Any offer of employment is conditioned upon the successful completion of a background investigation and drug screen.

 

Other:

 

  • Domestic and international anti-counterfeiting experience a plus.

HARMAN (harman.com) designs and engineers connected products and solutions for automakers, consumers, and enterprises worldwide, including connected car systems, audio and visual products, enterprise automation solutions; and services supporting the Internet of Things.  With leading brands including AKG®, Harman Kardon®, Infinity®, JBL®, Lexicon®, Mark Levinson® and Revel®, HARMAN is admired by audiophiles, musicians and the entertainment venues where they perform around the world. More than 25 million automobiles on the road today are equipped with HARMAN audio and connected car systems. Our software services power billions of mobile devices and systems that are connected, integrated and secure across all platforms, from work and home to car and mobile. HARMAN has a workforce of approximately 30,000 people across the Americas, Europe, and Asia. In March 2017, HARMAN became a wholly-owned subsidiary of Samsung Electronics. HARMAN is an Equal Opportunity /Affirmative Action employer.  All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, disability or Protected Veterans status.  HARMAN offers a great work environment, challenging career opportunities, professional training and competitive compensation. Looking for a challenge where your experience is valued? Come see what you can achieve as a leader with HARMAN!  (www.harman.com)

 


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