Offer summary

Qualifications:

Associate’s degree or equivalent work experience with at least 10 years in trademark and copyright prosecution., Deep understanding of Intellectual Property rules and regulations worldwide., Experience with IP docketing systems and electronic databases., Strong communication skills and proficiency in Microsoft Office and document management systems..

Key responsibilities:

Support trademark prosecution activities, including preparing and filing applications with USPTO and WIPO.

Correspond with non-US agents and clients regarding trademark matters.

Maintain accurate records and prepare reports on prosecution activities.

Conduct searches and assist in review of trademark clearance issues.

Job description

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.

Responsibilities:

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
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

The expected annual salary for this position ranges from $90,000 to $125,000. The salary offered will be determined by a wide range of factors including but not limited to experience level, education/training, and relevant skills.

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