Trademark Prosecution Paralegal

Pirkey Barber PLLC•Austin, TX

4d•$75,000 - $100,000•Hybrid

About The Position

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. The Trademark Paralegal performs a variety of duties for clients under attorney supervision. They maintain positive contact with clients, attorneys, and staff and observe confidentiality of client matters. Pirkey Barber is a growing firm that fosters a team-oriented environment where each employee is expected to assist as needed to ensure that the firm’s clients receive prompt, high-quality service. The trademark paralegal will have set core work hours, but overtime may be required on occasion.

Requirements

Bachelor's degree and strong academic record required
Minimum five 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

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
Prepare and file Extensions of Time, Allegations of Use, post-registration documents, and other standard trademark prosecution documents
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
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
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
Other related tasks and duties as requested