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.

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 [email protected]