BakerHostetler
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 8 a.m.–5 p.m. PT.
Responsibilities
Support the trademark prosecution practice; including preparation and filing of trademark and copyright applications with the USPTO and WIPO, formality documents such as Assignments, Office Action Responses, Statements of Use, Affidavits of Use, Renewals and other related filings; TTAB filings, oppositions and cancellations.
Correspond with non‑U.S. 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 and saving correspondence and documents in the firm’s document management system.
Conduct international and U.S. 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.
Requirements
Associate’s degree or equivalent work experience 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, and document management systems such as Net Docs.
Ability to work occasional overtime and weekends as needed.
Physical Demands The employee is regularly required to sit; use hands to handle documents, operate a keyboard and input data into a PC; and talk or hear. The employee is frequently required to walk. The employee is occasionally required to stand and reach with hands and arms. The employee is occasionally required to stand and reach with hands and arms and stoop, kneel, bend, crouch or crawl. The employee must occasionally lift and/or move up to 25 pounds. Specific vision abilities required include close vision, distance vision, peripheral vision, depth perception, and the ability to adjust focus.
Work Environment The noise level in the work environment is usually moderate.
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
Salary The expected annual salary range for this position is $100,000–$120,000.
Application Process Interested candidates should submit their resume to our online job posting.
Baker & Hostetler LLP is an Equal Opportunity Employer.
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Responsibilities
Support the trademark prosecution practice; including preparation and filing of trademark and copyright applications with the USPTO and WIPO, formality documents such as Assignments, Office Action Responses, Statements of Use, Affidavits of Use, Renewals and other related filings; TTAB filings, oppositions and cancellations.
Correspond with non‑U.S. 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 and saving correspondence and documents in the firm’s document management system.
Conduct international and U.S. 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.
Requirements
Associate’s degree or equivalent work experience 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, and document management systems such as Net Docs.
Ability to work occasional overtime and weekends as needed.
Physical Demands The employee is regularly required to sit; use hands to handle documents, operate a keyboard and input data into a PC; and talk or hear. The employee is frequently required to walk. The employee is occasionally required to stand and reach with hands and arms. The employee is occasionally required to stand and reach with hands and arms and stoop, kneel, bend, crouch or crawl. The employee must occasionally lift and/or move up to 25 pounds. Specific vision abilities required include close vision, distance vision, peripheral vision, depth perception, and the ability to adjust focus.
Work Environment The noise level in the work environment is usually moderate.
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
Salary The expected annual salary range for this position is $100,000–$120,000.
Application Process Interested candidates should submit their resume to our online job posting.
Baker & Hostetler LLP is an Equal Opportunity Employer.
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