Trademark Prosecution Paralegal

About the Role

Founded in 2006, Pirkey Barber is one of the largest firms in the United States focused on trademark, trade dress, copyright, and unfair competition law. We are frequently recognized as one of the leading trademark firms in the country. Headquartered in Austin, Texas, the Pirkey Barber team includes a number of remote attorneys and paralegals, with additional concentrations in the DC, San Francisco and Minneapolis areas. Our attorneys represent clients around the world in trademark-related matters, including intellectual property litigation, U.S. Patent and Trademark Office proceedings, domain name disputes, trademark policing, clearance, prosecution, portfolio management, trade dress, advertising counseling and false advertising litigation, social media and other online branding issues, and anti-counterfeiting enforcement. We have guided a wide range of extraordinary clients through dynamic shifts in technology and the world economy that have profoundly affected strategies for protecting and enforcing brands and content. We represent clients from a variety of industries, and our attorneys are well-versed in both prosecution and adversarial matters.

Responsibilities

• Conduct preliminary trademark clearance searches and order comprehensive trademark searches
• Perform preliminary evaluations of trademark search results
• Draft, prepare and file U.S. trademark applications, including drafting descriptions of goods and services
• Draft, send and follow up on correspondence to foreign associates
• Draft, send, and follow up on correspondence to clients requesting instructions or reporting on the status of their trademark matters
• Identify and capture appropriate trademark specimens from client websites for statement of use or Section 8 and 15 affidavits
• Research Trademark Manual of Examining Procedure (TMEP) and other applicable law to determine procedural requirements, as requested
• Maintain client records
• Review incoming correspondence, determine appropriate action
• Review and maintain docket and update as appropriate
• Share responsibility with attorneys for meeting all deadlines
• Maintain daily timekeeping for billing purposes, entering time records daily
• Perform other related tasks and duties as requested

Qualifications

• Bachelor's degree and strong academic record required
• Five to ten (5-10) years of trademark paralegal experience; law firm experience required
• Strong sense of accountability, taking ownership over projects and responsibilities and resolving issues proactively
• High level of accuracy, attention to detail, and excellent proofreading skills
• Strong written and verbal communication skills
• Strong Internet searching skills and computer skills
• Ability to assess information, anticipate issues and outcomes, and make effective decisions
• Initiative to proactively increase value to the position
• Ability to manage multiple requests, assess priorities, and achieve solutions under deadlines
• Strong organizational skills; ability to prioritize work, and work within competing deadlines
• Flexibility regarding work schedule to meet position needs outside of regular business hours
• Excellent teamwork skills and strong client service orientation
• Must have the ability to work in an organized, efficient manner, be willing to support the department with general administrative duties and special projects as needed
• Excellent interpersonal and communication skills
• Must be able to set and meet deadlines without reminders from others

Pay

$75,000 - $95,000 per year (eligible for overtime)

Benefits

• 401(k) and 401(k) matching
• Dental insurance
• Employee assistance program
• Flexible schedule
• Flexible spending account
• Health insurance
• Health savings account
• Life insurance
• Paid time off
• Parental leave
• Retailer plan
• Telehealth
• Vision insurance