Job Description:

At Bank of America, we are guided by a common purpose to help make financial lives better through the power of every connection. We do this by driving Responsible Growth and delivering for our clients, teammates, communities and shareholders every day.

 

Being a Great Place to Work is core to how we drive Responsible Growth. This includes our commitment to being an inclusive workplace, attracting and developing exceptional talent, supporting our teammates’ physical, emotional, and financial wellness, recognizing and rewarding performance, and how we make an impact in the communities we serve.

 

Bank of America is committed to an in-office culture with specific requirements for office-based attendance and which allows for an appropriate level of flexibility for our teammates and businesses based on role-specific considerations.

 

At Bank of America, you can build a successful career with opportunities to learn, grow, and make an impact. Join us!

Job Description:
The trademark paralegal is responsible for working with in-house attorneys, outside counsel, and internal marketing and business partners to administer the Company’s trademark portfolio.  This includes primary responsibility for maintaining the Company’s database for all foreign and domestic trademarks.  Other responsibilities include filing domestic and foreign trademark applications and maintaining records of worldwide trademarks, oppositions, cancellations, and conflict matters.

The trademark paralegal is heavily involved in working with business unit personnel on trademark matters including searches for new product names and slogans and gathering evidence of use for various domestic and foreign trademarks.  The trademark paralegal prepares reports on trademark activity as needed, dockets trademark related activity, assists with review of watch notices, performs internet research projects and other special projects as requested and assists with trademark matters during mergers/acquisitions and divestitures.  The trademark paralegal is responsible for setting up legal matter numbers, reviewing and approving legal invoices and handling all invoicing problems.  The position is a high activity position that requires the paralegal to handle multiple high profile projects under tight timelines.

Responsibilities:

Conducts preliminary clearance searches using USPTO website and internet.  Reviews full searches and prepare memos to marketing staff regarding availability of marksDockets and maintains global trademark records using docketing softwareWorks with marketing staff to obtain and assures the accuracy of specimens for Statements of Use, Extensions of Time and 8 & 15 affidavitsAssists attorneys with trademark assignments and name/address change records in U.S. and foreign countriesVerifies use requirements are fulfilledAssists with policing and protecting the Company’s intellectual property, including review of watch notices and other informationInvestigates possible infringementsWorks with business unit personnel and attorneys to gather evidence to support opposition and cancellation actions, and draft cease and desist or inquiry letters when appropriateHandles post-registration issues involving proper marking and use requirements and maintenance and renewal deadlineProvides support on various other matters, including intellectual property agreement, copyrights, and domain namesEvaluates laws, rules and regulations and provides concise written analysis to attorneysResearches relevant facts and case law to inform legal support for internal projectsOffers practical and succinct legal guidance to clients under attorney supervisionCollaborates with outside counsel to prepare trademark filingsWorks with business and control partners on audit and other control issuesWorks with technology team to maintain up-to-date trademark docketing technology

Skills:

Attention to DetailInterpret Relevant Laws, Rules, and RegulationsIssue ManagementLegal Drafting and WritingProblem SolvingAdvisoryCollaborationPolicies, Procedures, and GuidelinesRegulatory ComplianceStrategic ThinkingAnalytical ThinkingCritical ThinkingOral CommunicationsPrioritizationUnderstanding of Trademark LawTrademark Searching and DocketingStrong Communication Skills (verbal and written)Strong Organizational Skills with Ability to Handle Multiple ProjectsExperience with MS Excel, MS PowerPoint, MS Word, and Trademark Docketing/Management SoftwareResearch

Required Qualifications:

2+ years’ experience as a trademark paralegal at a law firm or in-house.

Minimum Education Requirement: High School Diploma / GED / Secondary School or equivalent

Shift:

1st shift (United States of America)

Hours Per Week: 

40