Trademark Prosecution Paralegal

About the Role

Founded in 2006, Pirkey Barber is one of the largest firms in the United States focused on trademark, trade dress, copyright, and unfair competition law. We are frequently recognized as one of the leading trademark firms in the country. Headquartered in Austin, Texas, the Pirkey Barber team includes a number of remote attorneys and paralegals, with additional concentrations in the DC, San Francisco and Minneapolis areas.

Our attorneys represent clients around the world in trademark-related matters, including intellectual property litigation, U.S. Patent and Trademark Office proceedings, domain name disputes, trademark policing, clearance, prosecution, portfolio management, trade dress, advertising counseling and false advertising litigation, social media and other online branding issues, and anti-counterfeiting enforcement. We have guided a wide range of extraordinary clients through dynamic shifts in technology and the world economy that have profoundly affected strategies for protecting and enforcing brands and content. We represent clients from a variety of industries, and our attorneys are well-versed in both prosecution and adversarial matters.

The Trademark Paralegal performs a variety of duties for clients under attorney supervision.  They maintain positive contact with clients, attorneys, and staff and observe confidentiality of client matters. The successful applicant will be required, as an essential function of this job, to perform work for a variety of Pirkey Barber clients, including religious organizations.  The successful applicant must be comfortable advocating on behalf of all firm clients.

For candidates in the Austin, Texas area, this is a hybrid position with in-office requirements. Out-of-state candidates will be considered for a fully remote position.

What You’ll Do

• 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, to advocate for clients’ applications
• Identify and capture appropriate trademark specimens from client websites for statement of use or Section 8 and 15 affidavits
• 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 client records
• 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
• An essential function of this job is performing the tasks above specifically for client(s) of a religious organization.
• 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 may be required on occasion.

Qualifications

• Bachelor's degree and strong academic record required
• Five to ten (5-10) years of trademark paralegal experience; law firm experience required
• 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
• 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 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

Salary

• $75,000 - $95,000 per year (eligible for overtime)

Benefits:

• 401(k)
• 401(k) matching
• Dental insurance
• Employee assistance program
• Flexible schedule
• Flexible spending account
• Health insurance
• Health savings account
• Life insurance
• Paid time off
• Parental leave
• Retirement plan
• Telehealth
• Vision insurance

This position is not available to candidates who now or in the future will require U.S. visa sponsorship (including H‑1B, TN, or E‑3 visas).

To learn more about this role, our firm, and our work, please visit our website at https://pirkeybarber.com/

If you require reasonable accommodation to complete a job application, pre-employment testing, or a job interview or to otherwise participate in the hiring process, please contact us at careers@pirkeybarber.com