Trademark Paralegal

Irvine, California
May 25, 2021
Required Education
Bachelors Degree
Position Type
Full time
About AbbVie
AbbVie’s mission is to discover and deliver innovative medicines that solve serious health issues today and address the medical challenges of tomorrow. We strive to have a remarkable impact on people’s lives across several key therapeutic areas: immunology, oncology, neuroscience, eye care, virology, women’s health and gastroenterology, in addition to products and services across its Allergan Aesthetics portfolio. For more information about AbbVie, please visit us at Follow @abbvie on Twitter, Facebook, Instagram, YouTube and LinkedIn.

The Trademark Paralegal is responsible for the management and support of clearance, prosecution and enforcement related to AbbVie’s global trademark portfolio.  This position works closely with the responsible in-house trademark attorneys in analyzing complex legal issues, developing and executing strategic solutions while acting as a liaison with business units and outside counsel worldwide.


Core Job Responsibilities:

  • Manage filing and maintenance of domestic and international trademark applications, recordal of assignments, renewals, office actions and new filings, including management of docket to ensure all deadlines are met
  • Communicate directly with business units concerning current use of trademarks and obtain evidence in support of use
  • Review correspondence from foreign counsel, prepare draft responses for attorney review, and communicate instructions to agents regarding office actions and other requests
  • Communicate with foreign agents and the USPTO regarding status
  • Assist in US and foreign trademark searches, including online searching to determine the availability of trademarks and prepare summaries for in-house counsel
  • Monitor watch notices and assist with opposition/conflict proceedings and organize evidence in support of such conflicts
  • Coordinate trademark file transfers and prepare necessary documentation in connection with trademarks portfolio acquisition and divestitures
  • Oversee execution and legalization of documents such as trademark assignments, powers of attorney, consents, etc., for submission in international trademark matters


Position Accountability / Scope:

  • Must be self-motivated, detail-oriented with high work standards
  • Excellent organizational, interpersonal, and oral and written communication skills
  • Frequently handles confidential or business-sensitive information with a high level of discretion, maturity and ethical integrity
  • Must be able to prioritize, meet deadlines and be flexible to adapt to changing organizational needs
  • Demonstrates strong leadership competencies


Minimum Education

  • Bachelor’s Degree and/or Paralegal Certificate


Minimum Experience/ Training Required

  • 4+ years of trademark experience
  • Extensive knowledge of domestic and international regulations, policies and processes related to trademark prosecution
  • Proficiency in using Microsoft Word, Excel and PowerPoint applications
  • Knowledge and proficiency with trademark databases and docketing programs, particularly the TM Cloud docketing system, preferred

Significant Work Activities
Continuous sitting for prolonged periods (more than 2 consecutive hours in an 8 hour day)
Job Type
Job Level Code
Equal Employment Opportunity
At AbbVie, we value bringing together individuals from diverse backgrounds to develop new and innovative solutions for patients. As an equal opportunity employer we do not discriminate on the basis of race, color, religion, national origin, age, sex (including pregnancy), physical or mental disability, medical condition, genetic information gender identity or expression, sexual orientation, marital status, protected veteran status, or any other legally protected characteristic.