Trademark Paralegal

About the role

Haynes Boone is looking for an experienced and motivated individual to support the Trademark practice group by assisting with U.S. and foreign trademark prosecution, managing trademark dockets, handling document management, and conducting research. This non-exempt position is based in the firm’s Dallas office.

Responsibilities

• Assist team with prosecution of U.S. and foreign trademarks supporting attorneys electronically across offices in different states and time zones.
• Oversee all aspects of trademark applications, including transmittal of filings to the USPTO via e-filing (TEAS).
• Assist with preliminary trademark searches as requested.
• Address foreign filings, including sending instructions to foreign counsel, complying with formal requirements, and any necessary follow up.
• Maintain trademark docket from application filing through registration, meeting with attorneys for docket reviews/upcoming deadline coverage and strategy for completion.
• Provide support for domestic and foreign infringement matters, as requested, such as assembling evidentiary material and creating and maintaining tracking reports.
• Draft assignment documents for recordation and meeting country specific requirements, such as notarization and legalization of documents.
• Utilize, search, and research information through the USPTO, WIPO websites, and other trademark online resources.
• Prepare/transmit reporting letters to clients regarding correspondence from USPTO and foreign counsel.
• Follow up with clients regarding dates of first use, specimens, and renewals.

Requirements

• 3+ years of experience as a trademark paralegal.
• Knowledge of USPTO procedures within TMEP, and CFR, as well as foreign trademark prosecution procedures.
• Experience in conducting trademark clearance searches and in U.S. and foreign jurisdictions.
• Proficiency in computerized docketing systems.
• Proficiency with all MS Office applications.

Skills

• Proficiency with PATTSY, IP Master, or similar docketing systems.
• Strong skills with Microsoft Word, Excel, and PowerPoint.
• Experience with Corsearch and/or CompuMark/SAEGIS preferred.
• Ability to translate difficult concepts into simple terms.
• Ability to work under tight deadlines and with a variety of work styles.
• Ability to work with minimal direction with the ability to multitask.
• Excellent verbal and written communication skills, strong analytical skills, and attention to detail.

Qualifications

Paralegal certification from an ABA approved school or bachelor’s degree in a field related to law, administration, or liberal arts required.

Working Conditions

Office Environment. Overtime Required. Must be able to move around the office up to 15% of the time to make copies, fax, file, etc. Remains stationary at least 85% of the time; this position constantly operates computers and other office productivity machines (e.g., copier, printer, etc.); occasionally required to move documents or files weighing up to 15 lbs.; this position requires constant communication and exchange of information with attorneys, clients, and staff; this position must be able to inspect and observe information on a computer screen at least 80% of the time.