The Dallas office is currently seeking an experienced Trademark Paralegal for our Intellectual Property Department. This Paralegal position will assist attorneys and staff in the delivery of quality legal services to clients in an efficient and cost-effective manner. The person in this position should be a self-starter, have a can-do attitude and possess excellent organizational skills. This is a full-time, non-exempt position with excellent benefits.
Essential Duties and Responsibilities:
- Preparation of domestic trademark applications, renewals, extensions of time, affidavits of use, etc. for some clients.
- Prosecution and maintenance of foreign trademark applications and registrations.
- Powers of Attorney
- Legalization procedures
- Prosecution of oppositions/cancellations/investigations in connection with foreign trademarks.
- Gathering evidence and related materials.
- Preparing computer reports re worldwide status of marks.
- Preparation and recordal of name changes, assignments, foreign use and registration Undertakings and Prior Right Agreements.
- International clearance searching, drafting opinion letters.
- Creation and maintenance of trademark databases and extranet sites
- Monitor foreign trademark law developments, update related database re same.
- Knock-Out searching to initially determine non-availability of marks.
- Assist attorneys in prosecution and maintenance of U.S. trademark applications and registrations including applications, renewals, extensions of time, statements of use, section 8&15 affidavits.
- Assist attorneys in preparation of documentation for U.S. office action responses and/or oppositions.
- Docketing records for all trademark matters (including U.S. litigation)
- Preparation of quarterly, six month and annual computer docket/status reports for some clients.
- Review and approval of invoices.
- Liaison with clients concerning the foregoing.
- Attendance at conferences and/or informational meetings regarding new trademark laws and policies.
- Meeting with foreign associates in our office to discuss client matters and receive new law information.
- Other projects as assigned by the Office Administrator.
- Minimum Bachelor’s degree or relevant work experience.
- Minimum five (5) years of work experience in a law firm environment, or related professional experience.
- Thorough knowledge of trademark docketing procedures.
- Thorough knowledge of U.S. & Foreign trademark prosecution procedures and PTO rules and forms.
- Familiarity with procedures for billable time in time tracking program such as CD Entry, CPI docketing program, and Filesite a plus. Also, familiarity with Microsoft Word and Excel and electronic filing with the USPTO required.
- Ability to organize and prioritize numerous tasks and complete them under time constraints.
- Ability to proofread material for contextual, grammatical, typographical or spelling errors.
- Interpersonal skills necessary to communicate in person, by e-mail and telephone and follow instructions effectively from a diverse group of clients, attorneys and staff and provide information with ordinary courtesy and tact.
- Work may require more than 35 hours per week to perform the essential duties of the position and may require irregular hours.
- Ability to operate standard office equipment such as computer, photocopiers, and fax machines.
Extent of Contact (Within and outside the Firm)
- Interpersonal skills necessary in order to communicate with partners, associates, paralegals, management, secretarial, support staff, vendors, and building maintenance.
- Interpersonal skills necessary to communicate by e-mail and telephone providing information with courtesy and tact.
- Position requires working at a computer substantial periods of time, as well as walking, lifting up to 20 pounds;
- Bending, reaching, extensive keyboarding and use of computer mouse.
Working Condition and Environment
- Normal office environment with little exposure to excessive noise, dust and temperature.
- Work regularly requires more than the standard work week to perform the essential duties of the position.
Baker Botts L.L.P. is a Federal contractor and an Equal Opportunity Employer. Baker Botts is subject to Executive Order 11246 and is required to take affirmative action to employ and advance in employment qualified minorities, women, protected veterans, and individuals with disabilities. Baker Botts considers all qualified applicants for employment without regard to race, color, gender, sex, age, religion, creed, national origin, citizenship, marital status, sexual orientation, disability, medical condition, military and veteran status, gender identity or expression, genetic information or any other basis protected by federal, state or local law.