Trademark Paralegal

🕒 June 17

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BakerHostetler

1001 - 5000 employees

Founded 1916

💼 Consulting

🏥 Healthcare

🛡️ Insurance

Consulting • Healthcare • Insurance

BakerHostetler is a large U. S. law firm that provides sophisticated legal counsel and litigation services to businesses, institutions, and leaders across a wide range of practice areas, including commercial litigation, privacy and data protection, tax, IP, environmental and product liability, regulatory and compliance, and corporate transactions. The firm focuses on helping clients manage risk, achieve strategic goals, and navigate complex regulatory and transactional issues, and it highlights continuous growth, high-profile hires, and recognized attorney rankings.

📋 Description

• 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

🎯 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

🏖️ 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

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