Haynes and Boone, LLP
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Trademark Paralegal
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Haynes and Boone, LLP Haynes and Boone’s Orange County office serves the needs of California’s premier technology industries and capitalizes on the West Coast’s global access. We have vibrant practices in intellectual property (IP), in-bound Asian work, venture-funded corporate matters, and big-ticket litigation such as patent, securities, insurance coverage, and class action labor and employment matters. Our thriving economic community is home to an array of businesses, ranging from Fortune 500 companies to emerging technology ventures. Our expanded presence heightens Haynes and Boone’s coast-to-coast capabilities while giving clients the benefits of our growing geographic base. Most of our California-based lawyers have earned engineering or technical degrees in addition to law degrees, enhancing their understanding of the intricacies of IP. Our team members have been recognized in publications such as The Best Lawyers in America directory (Woodward/White, Inc.), Intellectual Asset Management (IAM) Patent 1000, and Managing IP Magazine (Euromoney Institutional Investor PLC). We are committed to having a diverse workforce that reflects our communities, and we seek highly motivated lawyers and staff who value our culture of respect and teamwork. Salary Range The expected salary range for this position is $90,000.00-$125,000.00. Please note that the final offer amount may vary based on experience and skillset of the selected candidate. This non-exempt position is responsible for supporting the Trademark practice group by assisting with US and Foreign trademark prosecution (e.g. requesting filing instructions, gathering specimens from the client, filing required documents through the USPTO, corresponding with foreign counsel) managing trademark dockets, document management and legal research. Essential Duties
Assist team with prosecution of U.S. and foreign trademarks supporting attorneys electronically across offices in different states and time zones; Handle all aspects of trademark applications, including transmittal of filings to the USPTO via e-filing (TEAS); Assist with preliminary trademark searches as requested; Attend to 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; Following up with clients regarding dates of 1st use, specimens, renewals, and post-issue requirements such as Statement of Use, Section 8 & 15, etc. Other Duties
Perform other related duties as assigned. Reporting Relationship
The Trademark Paralegal reports to the Office Administrator or Office Supervisor. Qualifications
Knowledge/Experience
Candidate should have 5+ 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; and 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 CT Corsearch and/or Saegis preferred. Must be able to translate difficult concepts into simple terms. Ability to work under tight deadlines and with a variety of work styles. Must be able to work with minimal direction with the ability to multitask. Must possess excellent verbal and written communication skills, strong analytical skills and attention to detail. Education
Paralegal certification from an ABA approved school or bachelor’s degree in a field related to law, administration, or liberal arts required. Physical Demands
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; occasionally required to move documents or files weighing up to 15 lbs.; this position requires constant communication and exchange of information with the Firm attorneys, clients and staff; this position must be able to inspect and observe information on a computer screen at least 80% of the time. Working Conditions
Office Environment. Overtime Required. Seniority level Mid-Senior level Employment type
Full-time Job function
Legal Industries
Law Practice New to this role? Referrals increase your chances of interviewing at Haynes and Boone, LLP.
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Trademark Paralegal
role at
Haynes and Boone, LLP Haynes and Boone’s Orange County office serves the needs of California’s premier technology industries and capitalizes on the West Coast’s global access. We have vibrant practices in intellectual property (IP), in-bound Asian work, venture-funded corporate matters, and big-ticket litigation such as patent, securities, insurance coverage, and class action labor and employment matters. Our thriving economic community is home to an array of businesses, ranging from Fortune 500 companies to emerging technology ventures. Our expanded presence heightens Haynes and Boone’s coast-to-coast capabilities while giving clients the benefits of our growing geographic base. Most of our California-based lawyers have earned engineering or technical degrees in addition to law degrees, enhancing their understanding of the intricacies of IP. Our team members have been recognized in publications such as The Best Lawyers in America directory (Woodward/White, Inc.), Intellectual Asset Management (IAM) Patent 1000, and Managing IP Magazine (Euromoney Institutional Investor PLC). We are committed to having a diverse workforce that reflects our communities, and we seek highly motivated lawyers and staff who value our culture of respect and teamwork. Salary Range The expected salary range for this position is $90,000.00-$125,000.00. Please note that the final offer amount may vary based on experience and skillset of the selected candidate. This non-exempt position is responsible for supporting the Trademark practice group by assisting with US and Foreign trademark prosecution (e.g. requesting filing instructions, gathering specimens from the client, filing required documents through the USPTO, corresponding with foreign counsel) managing trademark dockets, document management and legal research. Essential Duties
Assist team with prosecution of U.S. and foreign trademarks supporting attorneys electronically across offices in different states and time zones; Handle all aspects of trademark applications, including transmittal of filings to the USPTO via e-filing (TEAS); Assist with preliminary trademark searches as requested; Attend to 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; Following up with clients regarding dates of 1st use, specimens, renewals, and post-issue requirements such as Statement of Use, Section 8 & 15, etc. Other Duties
Perform other related duties as assigned. Reporting Relationship
The Trademark Paralegal reports to the Office Administrator or Office Supervisor. Qualifications
Knowledge/Experience
Candidate should have 5+ 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; and 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 CT Corsearch and/or Saegis preferred. Must be able to translate difficult concepts into simple terms. Ability to work under tight deadlines and with a variety of work styles. Must be able to work with minimal direction with the ability to multitask. Must possess excellent verbal and written communication skills, strong analytical skills and attention to detail. Education
Paralegal certification from an ABA approved school or bachelor’s degree in a field related to law, administration, or liberal arts required. Physical Demands
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; occasionally required to move documents or files weighing up to 15 lbs.; this position requires constant communication and exchange of information with the Firm attorneys, clients and staff; this position must be able to inspect and observe information on a computer screen at least 80% of the time. Working Conditions
Office Environment. Overtime Required. Seniority level Mid-Senior level Employment type
Full-time Job function
Legal Industries
Law Practice New to this role? Referrals increase your chances of interviewing at Haynes and Boone, LLP.
#J-18808-Ljbffr