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Senior Paralegal - Trademarks and Transactional Matters; St. Paul, MN

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Tracking Code
5360
Job Description

H.B. Fuller is a leading global adhesives provider focusing on perfecting adhesives, sealants and other specialty chemical products to improve products and lives. Our commitment to innovation brings together people, products and processes that answer and solve some of the world's biggest challenges. And, our promise to our people connects them with opportunities to innovate and thrive.

Location: St. Paul, MN

The Senior Paralegal for Trademarks and Transactional Matters has responsibility for assisting the business and Law Department with legal matters affecting the Company. The successful candidate will be an experienced trademark professional capable of collaborating with various legal and business stakeholders and administering the day-to-day operation of H.B. Fuller’s trademark portfolio and protection of intellectual property and confidential information. This will include managing agents and outside counsel and serving as the key staff support for trademark inquiries and protection and requests for confidentiality agreements. The position reports to the Senior Counsel and has responsibility for coordination of global trademark administration and transactional legal services.

Role is based in St. Paul, MN.

Description:

The Senior Paralegal will have responsibilities in the areas of global trademark administration, confidentiality agreements, and other general matters.

50% Global Trademark Administration

  • Under minimal attorney supervision, manage trademark portfolio including monitoring docket (e.g., applications, renewals, office action responses, etc), conducting preliminary searches, communicating with H.B. Fuller personnel and international trademark agents and trademark registries, review advertising and promotional materials, perform due diligence in the Mergers and Acquisition area, providing legal support for attorneys in the Law Department.
  • Organize and maintain trademark docketing system and files. Conduct preliminary domestic/international screening/knock-out searches; request search reports; analyze trademark searches. Preparation of domestic trademark applications, office action responses, notices of opposition, affidavits of use, renewal applications and extensions to oppose published trademarks. Gather specimens of use and other evidentiary materials. Authorize invoices for payment from US and foreign outside counsel.
  • Communicate with and provide guidance to in-house clients regarding trademark matters. Communicate and authorize foreign associates to file trademark applications, respond to office actions and notices of opposition, file affidavits of use, renew registrations and file extensions and oppositions to published trademarks. Assist in management of disputes related to trademark infringement issues.
  • Prepare powers of attorney, assignment documents, responses to office actions and other legal documents. Draft co-existence agreements and intercompany and third-party license agreements. Notarize (must be or become notary public) and legalize/apostille various documents for trademark and corporate matters. Maintain related records and files.

45% Global Administration of Confidentiality Agreements and Transactional Matters

  • Draft Company form confidentiality agreements protecting the Company’s intellectual property with minimal attorney review, including advising internal clients about options regarding alternative form language, form of contract which is appropriate (one way or two-way agreement, consulting agreement), etc.
  • Review third party agreements with minimal attorney review, for inclusion of Company confidentiality form provisions and provide comments to conform third party agreements to Company form agreement. Draft amendments to confidentiality agreements with minimal attorney review. Communicate with H.B. Fuller personnel regarding review and status of agreements.
  • Utilize, maintain and provide training regarding the confidentiality agreement request and review process to all levels within the Company.
  • Maintains related records and files.

5% Other General Matters

  • Examples may include intake and tracking of transactional work requests, special projects, research related to merger and acquisitions, etc.
  • As needed, serve as backup for other duties in the Law Department.
  • Some responsibilities require in office availability.

Requirements:

  • Bachelor’s degree or equivalent level of relevant experience.
  • Role based in St. Paul, MN and preference given to candidates who do not require relocation assistance.
  • Minimum five (5) to ten (10) years of paralegal or administrative experience in trademark administration and contract/Confidential Disclosure Agreement drafting.
  • Familiarity with domestic/international trademark searching, clearance, filings, prosecution and docketing.
  • Experience in preparing, filing and prosecuting US and foreign trademark applications.
  • Working knowledge of research databases: Westlaw or Lexis/Nexis and the Internet.
  • Extensive knowledge of computer-based systems used to manage workload and records, including but not limited to Microsoft Word, Access, Excel, SharePoint, and PowerPoint software.
  • Exceptional organizational and analytical skills.
  • Strong communication skills, both oral and written.
  • Ability to travel estimated 5%.
  • Preferred Qualifications include:
    • Significant experience with general contract administration
    • Paralegal training/certificate
    • Presentation and PowerPoint skills

Employees are eligible for full benefits, including medical, dental, insurance, 401k contribution, paid time off and paid holidays. All employees also qualify for an annual cash bonus, based on business performance. Annual raises are rewarded based on company and individual performance.

To all recruitment agencies: H.B. Fuller does not accept agency resumes unless directly engaged by Human Resources. Please do not forward any resumes to Human Resources or any employees. H.B. Fuller is not responsible for any fees related to unsolicited resumes.

For more information and to apply, go to: http://jobs.hbfuller.com/

H.B. Fuller is an Equal Opportunity Employer. All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, veteran, or disability status.

Job Location
Vadnais Heights, Minnesota, United States
Position Type
Full-Time/Regular
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