Corporate Paralegal

Position Summary

Company Description: Company website is a leading provider of Internet services and online marketing solutions and provides such services to small businesses in order to help them compete and succeed successfully online. Based in Jacksonville, FL, Company website operates several of the largest global domain registrars and further meets the needs of small businesses anywhere along their lifecycle with affordable, subscription-based solutions including website design and management, search engine optimization, online marketing campaigns, local sales leads, social media, mobile products, e-commerce solutions and call center services.

Summary of Job: Excellent opportunity for Paralegal with minimum 5-7 years of experience in Litigation, Intellectual Property and Corporate matters to assist in-house Legal Department with researching and docketing litigation matters, maintaining large portfolio of trademark, copyright, patent and domain name portfolios and administration of Board portal for quarterly meetings. In-house experience preferred. Position is based in our Corporate Office in Jacksonville, Florida. Compensation shall be based on experience and shall include equity compensation.

Basic Qualifications:

• High Level Proficiency in Word and Excel a must;
• Excellent written and oral communication skills required;
• Must be able to proofread, edit and compose letters and other documents;
• Strong organizational skills and ability to prioritize and multi-task;
• Solid interpersonal and teamwork skills;
• Ability to work independently with minimal supervision;
• Ability to work in a fast-paced and challenging environment;
• Desire to learn and develop new skills;
• Strong follow-up skills and attention to detail;
• Experience searching and clearing trademarks and performing patent searches;
• Min 3-5 years' experience as an IP Paralegal or IP Legal Assistant in a law firm or law department; in-house experience preferred;
• College degree or paralegal degree/certificate required;
• Hardworking, well organized and able to manage numerous projects simultaneously under deadline pressure;
• Commitment to professionalism and collegiality;
• Common sense, great judgment and ethical.

Preferred Knowledge and Skills:

• Demonstrated ability to apply knowledge of laws and regulations to legal matters;
• Ability to interface effectively with all levels of the organization and capable of escalating issues effectively to senior business management as needed;
• Strong analytical and problem solving skills with strong ability to demonstrate sound judgment even in ambiguous situations;
• Exceptional drafting skills along with excellent business judgment and strategic thinking;
• Ability to thrive in a fast-paced, entrepreneurial, highly collaborative, team environment;
• Fluency in oral and written English; fluency in a second language is desirable but not essential;
• Familiarity with basic Internet infrastructure, domain names, e-commerce, social media, and marketing concepts and terminology.

Key Responsibilities:

• Assisting in the maintenance of the IP portfolio and the prosecution and enforcement of trademarks, patents, copyrights and domain names;
• Receiving trademark search requests from clients, conduct on-line trademark screening searches, evaluate results and report preliminary opinion to clients regarding availability of mark(s) for use and/or registration;
• Order and review full trademark searches, investigate relevant listings for details of use, evaluate results of searches and investigations, and draft opinion memos to clients regarding availability of mark(s) for use and/or registration;
• Performing research, gathering data and working closely with outside counsel in preparation of trademark and service mark and copyright filings, as well as gathering specimens for filing Section 8 & 15 affidavits, renewals, assignments, change of names, and responses to office actions. Familiarity with the TMEP desirable;
• Investigate third party uses of marks;
• Maintain monthly litigation spreadsheet;
• Assist with mergers and acquisitions including but not limited to working with attorneys to prepare all documents required to form corporations, partnerships, and limited liability companies in any state;
• Assemble final closing documents and maintain file organization (physical and electronic);
• Maintenance of corporate minute books;
• Interact with board members;
• Prepare, gather and upload board materials;
• Assist Executive Team with mergers and acquisitions matters from pre-closing establishment of data sites for due diligence collection through the post-close streamlined integration process;
• Communicate regularly with attorneys regarding the status of projects and deadlines, and inform attorneys of any issues;
• Assist in general as needed and with corporate work. Provide general administrative support and work on special projects as needed;
• Interact with auditors and finance team; and
• Perform other tasks as requested.
• Preparing cease and desist letters. Preparing and maintaining charts and reports of status of trademarks, copyrights, and enforcement actions;
• Review new lawsuits against the company, gather initial records and research and summarizes the matters for in-house counsel;
• Works closely with in-house counsel in litigating various matters, including day-to-day interaction with internal business clients, outside counsel, and opposing parties as appropriate;
• Assists in-house counsel in drafting and filing responses to actions, issuing and tracking preservation notices;
• Work closely with in-house and outside counsel to schedule depositions and meetings;

Physical Demands: The physical demands described here are representative of those that must be met by an employee to successfully perform the essential functions of this job. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions. While performing the duties of this job, the employee is regularly required to stand; walk; use hands to finger, handle, or feel; reach with hands and arms. The employee is frequently required to climb or balance and stoop, kneel, crouch, or crawl. The employee must frequently lift and/or move up to 15 pounds and occasionally lift and/or move more than 15 pounds.

Work Environment: The work environment characteristics described here are representative of those an employee encounters while performing the essential functions of this job. Reasonable accommodations may be made to enable individuals with disabilities to perform essential functions. The noise level in the work environment is usually moderate.

Years of Relevant Work Experience:5-7 years

Education: College degree or paralegal degree/certificate