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. This is a remote position, with working hours of 8a-5p PT.
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; 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
LANGUAGE SKILLS:
Ability to speak effectively with all levels of clients and professional and support staff. Interpersonal communication skills necessary to maintain effective relationships with partners, attorneys, clients and staff and to exhibit a high degree of responsiveness, diplomacy and professionalism in these interactions. Ability to effectively and promptly respond to common inquiries or complaints from all levels of professional and support staff, clients, regulatory agencies, or members of the business community. Ability to read and interpret documents such as operating instructions, procedure manuals, general business periodicals, professional journals, technical procedures, governmental regulations, financial reports, and legal documents.
MATHEMATICAL SKILLS:
Ability to add, subtract, multiply, and divide in all units of measure, using whole numbers, common fractions, and decimals. Ability to calculate figures and amounts such as discounts, proportions, percentages, area and circumference.
REASONING ABILITY:
Ability to apply common sense understanding to carry out instructions furnished in written, oral, or diagram form. Ability to deal with problems involving several concrete variables in standardized situations. Ability to define problems, collect data, establish facts and draw valid conclusions. Ability to interpret an extensive variety of instructions and deal with several abstract and concrete variables. Exhibit independent thinking and decision making. Ability to think strategically, develop tactics and execute pragmatically.
PHYSICAL DEMANDS:
The physical demands described here are representative of those that should be met by an employee to successfully perform the essential functions of this job. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions. While performing the duties of this job, the employee is regularly required to sit; use hands to finger, handle, or feel objects, documents, books, pen/pencil, paper, controls and manipulate a keyboard, and input data into a PC; and talk or hear. The employee is frequently required to walk. The employee is occasionally required to use hands to prepare correspondence and reports on a personal computer. The employee is occasionally required to stand and reach with hands and arms. And stoop, kneel, bend, crouch or crawl. Ability to operate a variety of standard office equipment including a computer, copy and facsimile machines. The employee must occasionally lift and/or move up to 25 pounds. Specific vision abilities required by this job include close vision, distance vision, peripheral vision, depth perception and the ability to adjust focus.
WORK ENVIRONMENT:
The work environment characteristics described here are representative of those an employee encounters while performing the essential functions of this job. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions. The noise level in the work environment is usually moderate.
OTHER SKILLS and ABILITIES:
Demonstrated ability to multi-task and be detail-oriented with strong organizational skills. Strong analytical and communication skills both oral and written. Excellent organizational and planning skills with ability to prioritize multiple tasks and projects to meet deadlines. Outstanding creativity; flexibility and persistence; motivation and energy with the ability to work with little supervision and collaborate with other members of the team. Ability to work overtime when needed. Work occasionally requires more than 40 hours per week to perform the essential duties of the position. A tolerance for uncertainty and an ability to prioritize and complete simultaneous projects with minimal supervision. Strong project management skills. Project and team management experience with attention to detail and a willingness to “roll up sleeves” and operate at whatever level is needed to accomplish tasks. Thorough understanding of technologies that can be applied to firm operations and enhance working efficiency. Ability to work in a fast-paced environment with strict deadlines. Ability to exercise discretion with confidential and sensitive information. Must be able to perform essential duties of the position with time constraints and interruptions. A strong client service approach and team orientation. Demonstrate good judgment, tact, and flexibility under pressure in a mixed-matrix environment with many stakeholders and potentially competing priorities.
Why Join BakerHostetler?
For more than a century, BakerHostetler has been committed to excellence, collaboration, and innovation. With more than 1,000 attorneys across 18 offices nationwide, we rely on talented professionals to help deliver exceptional client service. What sets us apart? At BakerHostetler, your work truly matters—you’ll have a voice in shaping growth strategies, work alongside a supportive and collaborative team, and be valued as a strategic partner, not just a staff member. We offer competitive compensation, comprehensive benefits, and a culture built on respect, teamwork, and professional development. If you’re looking for a place where you can make an impact, grow your career, and be part of something bigger, you belong at BakerHostetler.
Benefits
Offering competitive pay and benefits, while providing a collegial and respectful work environment, is part of our commitment to fostering a workplace that values employees.
Our comprehensive and competitive benefit program includes:
- 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
Application Process
Interested candidates should submit their resume to our online job posting.
The expected annual salary range for this position is $100,000- $120,000. The salary offered in any location will be determined by a wide range of factors, including, but not limited to, experience level, education/training, geographic region, and relevant skills. BakerHostetler offers a comprehensive and competitive benefits program, including group health, dental and vision insurance, paid holidays (11 days), 401(k) plan, parental leave, family care program, wellness program, life and accident insurance, and short and long-term disability.
Baker & Hostetler LLP is an Equal Opportunity Employer.
Equal Opportunity Employer
This employer is required to notify all applicants of their rights pursuant to federal employment laws. For further information, please review the Know Your Rights (https://www.eeoc.gov/poster) notice from the Department of Labor.
