Trademark Prosecution Paralegal

Summary: Performs a variety of duties for clients under attorney supervision. Maintains positive contact with clients, attorneys, and staff and observes confidentiality of client matters.

Qualifications To perform this job successfully, an individual must be able to perform each essential duty satisfactorily. The requirements listed below are representative of the knowledge, skill, and/or ability required. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.

• Bachelor's degree and strong academic record required
• Minimum three years of legal trademark experience
• 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
• Have 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 a 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

Specific 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 affidavit
• 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 physical and electronic files
• 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

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 will be required on occasion. Pirkey Barber offers remote work flexibility for a few days a week.

Pirkey Barber is committed to encouraging and sustaining a culture of diversity, equity, and inclusion. We recognize that the field of intellectual property law has been traditionally underrepresented in terms of women and members of racial, ethnic, LGBT+, and other minorities, and we actively strive to increase diversity within our firm. We remain committed to actively recruiting, retaining, and advancing currently under-represented attorneys at our firm. (More information about our firm’s culture is available at pirkeybarber.com/our-culture.)

Recruitment agencies: Pirkey Barber is not accepting unsolicited agency resumes for this position. Please do not forward resumes to our careers email address or any Firm employees. Pirkey Barber is not responsible for any fees related to unsolicited resumes.