Paralegal - Trademark
Baker Botts

Job Info

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Baker Botts is currently seeking an experienced Trademark Paralegal for our Intellectual Property Department. This Paralegal position will assist attorneys and staff in the delivery of quality legal services to clients in an efficient and cost-effective manner. The person in this position should be a self-starter, have a can-do attitude and possess excellent organizational skills. This is a full-time, non-exempt position, resident in either our New York, Austin, or Dallas offices with excellent benefits.

Essential Duties and Responsibilities:

• Preparation of domestic trademark applications, renewals, extensions of time, affidavits of use, etc. for some clients.
• Prosecution and maintenance of foreign trademark applications and registrations.
• Powers of Attorney
• Legalization procedures
• Prosecution of oppositions/cancellations/investigations in connection with foreign trademarks.
• Gathering evidence and related materials.
• Preparing computer reports re worldwide status of marks.
• Preparation and recording of name changes, assignments, foreign use and registration Undertakings and Prior Right Agreements.
• International clearance searching, drafting opinion letters.
• Creation and maintenance of trademark databases and extranet sites
• Monitor foreign trademark law developments, update related database re same.
• Knock-Out searching to initially determine non-availability of marks.
• Assist attorneys in prosecution and maintenance of U.S. trademark applications and registrations including applications, renewals, extensions of time, statements of use, section 8&15 affidavits.
• Assist attorneys in preparation of documentation for U.S. office action responses and/or oppositions.
• Docketing records for all trademarks matters (including U.S. litigation)
• Preparation of quarterly, six month and annual computer docket/status reports for some clients.
• Review and approval of invoices.
• Liaison with clients concerning the foregoing.
• Attendance at conferences and/or informational meetings regarding new trademark laws and policies.
• Meeting with foreign associates in our office to discuss client matters and receive new law information.
• Other projects as assigned by the Director of Administration.

Qualifications:

• Minimum Bachelor’s degree or relevant work experience.
• Minimum five (5) years of work experience in a law firm environment, or related professional experience.
• Thorough knowledge of trademark docketing procedures.
• Thorough knowledge of U.S. & Foreign trademark prosecution procedures and PTO rules and forms.
• Familiarity with procedures for billable time in time tracking program such as CD Entry, CPI docketing program, and Filesite a plus. Also, familiarity with Microsoft Word and Excel and electronic filing with the USPTO required.
• Ability to organize and prioritize numerous tasks and complete them under time constraints.
• Ability to proofread material for contextual, grammatical, typographical or spelling errors.
• Interpersonal skills necessary to communicate in person, by e-mail and telephone and follow instructions effectively from a diverse group of clients, attorneys and staff and provide information with ordinary courtesy and tact.
• Work may require more than 35 hours per week to perform the essential duties of the position and may require irregular hours.
• Ability to operate standard office equipment such as computer, photocopiers, and fax machines.

Physical Demands:

• Must be able to lift boxes of files weighing approximately 15 pounds.
• Must be able to routinely lift and carry file folders weighing up to 5-10 pounds.
• Must be able to spend long periods of time working at computer workstation.
• Must be able to lift, squat, kneel and bend.

Working Condition and Environment:

• Work is normally performed in a typical interior/office work environment.
• Position is full-time and requires a five-day workweek and standard hours as outlined in the firm policy manual. Work frequently requires more than the regularly scheduled hours per week to perform the essential duties of the position.
• Must be available to work overtime, including weekend hours, when necessary to meet established deadlines or stay current with occasional peaks in workload. Must be willing to change regular work schedule to meet the needs of the Firm.
• Must be able to perform essential duties of the position with time constraints and frequent interruptions.
• Ability to work well in high pressure environments.
• This role may be hybrid and will require a minimum of three days per week (or at least 60%) present in the office, and up to two days per week (40%) may be performed remotely
• Fully vaccinated for COVID-19, subject to accommodation

This job has expired.