Trademark Paralegal

BakerHostetler•Costa Mesa, CA

2d•$100,000 - $120,000•Remote

About The Position

Our Firmwide IP Services department has an opportunity for a Trademark Paralegal role. Reporting to a Trademark Supervisor, this position will support the trademark prosecution practice at BakerHostetler. This is a remote position, with working hours of 8a-5p PT.

Requirements

Associate’s degree or work experience equivalent with a minimum of 10 years of trademark and copyright prosecution experience
Deep understanding of Intellectual Property rules and regulations in jurisdictions worldwide
Experience with IP docketing systems
Ability to effectively communicate with attorneys, staff and clients
Strong oral and written communication skills
Proficiency with Microsoft Office Suite, including Word and Excel, Document Management Systems such as Net Docs
Ability to work occasional overtime and weekends as needed

Nice To Haves

Ability to speak effectively with all levels of clients and professional and support staff.
Interpersonal communication skills necessary to maintain effective relationships with partners, attorneys, clients and staff and to exhibit a high degree of responsiveness, diplomacy and professionalism in these interactions.
Ability to effectively and promptly respond to common inquiries or complaints from all levels of professional and support staff, clients, regulatory agencies, or members of the business community.
Ability to read and interpret documents such as operating instructions, procedure manuals, general business periodicals, professional journals, technical procedures, governmental regulations, financial reports, and legal documents.
Ability to add, subtract, multiply, and divide in all units of measure, using whole numbers, common fractions, and decimals.
Ability to calculate figures and amounts such as discounts, proportions, percentages, area and circumference.
Ability to apply common sense understanding to carry out instructions furnished in written, oral, or diagram form.
Ability to deal with problems involving several concrete variables in standardized situations.
Ability to define problems, collect data, establish facts and draw valid conclusions.
Ability to interpret an extensive variety of instructions and deal with several abstract and concrete variables.
Exhibit independent thinking and decision making.
Ability to think strategically, develop tactics and execute pragmatically.
Demonstrated ability to multi-task and be detail-oriented with strong organizational skills.
Strong analytical and communication skills both oral and written.
Excellent organizational and planning skills with ability to prioritize multiple tasks and projects to meet deadlines.
Outstanding creativity; flexibility and persistence; motivation and energy with the ability to work with little supervision and collaborate with other members of the team.
Ability to work overtime when needed.
Work occasionally requires more than 40 hours per week to perform the essential duties of the position.
A tolerance for uncertainty and an ability to prioritize and complete simultaneous projects with minimal supervision.
Strong project management skills.
Project and team management experience with attention to detail and a willingness to “roll up sleeves” and operate at whatever level is needed to accomplish tasks.
Thorough understanding of technologies that can be applied to firm operations and enhance working efficiency.
Ability to work in a fast-paced environment with strict deadlines.
Ability to exercise discretion with confidential and sensitive information.
Must be able to perform essential duties of the position with time constraints and interruptions.
A strong client service approach and team orientation.
Demonstrate good judgment, tact, and flexibility under pressure in a mixed-matrix environment with many stakeholders and potentially competing priorities.

Responsibilities

Support the trademark prosecution practice; including preparation and filing of trademark and copyright applications with the USPTO and WIPO, formality documents such Assignments, Office Action Responses, Statements of Use, Affidavits of Use, Renewals and other related filings; TTAB filings, oppositions and cancellations.
Correspond with NonUS agents regarding foreign filings and related activities
Communicate with clients regarding status of trademark matters and related activities
Process incoming files transferred to the firm
Prepare reports related to trademark prosecution activities; including client status reports and docket reports
Ensure accurate record keeping related to trademark prosecution activities; including maintaining the IP prosecution docket, saving correspondence and documents in the firm’s document management system
Conduct international and US preliminary searches via internet and electronic databases; assist in review of search reports and other issues related to clearance of marks
Capture billable time in the firm’s timekeeping system
Stay up-to-date with changes to Intellectual Property rules and regulations
Maintain excellent client service to internal and external clients

Benefits

Competitive salaries and a performance bonus program
Group health, dental, and vision insurance
Multiple plan options and various benefit levels
Same-sex domestic partner coverage
Pre-tax premiums
Coverage begins on date of hire
Group term life/AD&D and voluntary supplemental group universal life insurance
Voluntary accident insurance – self and family
Long-term care insurance
Short-term disability benefits
Long-term disability benefits
Pre-tax benefit programs – dependent care, health care reimbursement and transit/qualified parking (in most cities)
Retirement program – voluntary 401(k) plan
paid holidays (11 days)
parental leave
family care program
wellness program
life and accident insurance
short and long-term disability