Trademark Paralegal

Haynes and Boone, LLP; Dallas (TX); On-site; USD 60,000 - 90,000; Full time

Job summary

Haynes and Boone, LLP in Dallas is seeking an experienced Trademark Paralegal to support U.S. and foreign trademark prosecutions, manage docketing, and assist with filing documents to the USPTO.

The role emphasizes collaboration, accuracy, and efficient handling of multiple matters. The ideal candidate has 3+ years of trademark paralegal experience, knowledge of TMEP and CFR, and proficiency with docketing systems and MS Office.

Qualifications

• 3+ years of experience as a trademark paralegal.
• Knowledge of USPTO procedures within TMEP, CFR, and foreign trademark prosecution procedures.
• Experience in conducting trademark clearance searches in U.S. and foreign jurisdictions.
• Proficiency in computerized docketing systems.
• Proficiency with MS Office applications.

Responsibilities

• Assist with prosecution of U.S. and foreign trademarks across offices and time zones.
• Oversee all aspects of trademark applications, including filing to USPTO via TEAS.
• Assist with preliminary trademark searches as requested.
• Coordinate foreign filings and liaise with foreign counsel.
• Maintain trademark docket from filing through registration and deadlines.
• Prepare reporting letters to clients regarding USPTO and foreign counsel correspondence.
• Follow up with clients on dates of first use, specimens and renewals.
• Perform other related duties as assigned.

Skills

Docketing systems

MS Office

Communication skills

Attention to detail

Multitasking

Deadline driven

Education

Paralegal certification (ABA approved)

Tools

PATTSY

IP Master

Corsearch

CompuMark/SAEGIS

Job description

Interested in supporting the success of some of the most recognized national/international brands? Do you want to be a part of a cohesive and collaborative team working alongside the top trademark attorneys in the industry? Looking to join a dynamic firm that focuses on professional development and overall well-being and that is nestled in a vibrant business, dining, and residential hub? If so, then perhaps you should take a look at Haynes Boone.

Haynes Boone, listed among the fastest-growing law firms in the Am Law 100, is looking for an experienced and motivated individual to support the Trademark practice group by assisting with U.S. and foreign trademark prosecution (e.g. requesting filing instructions, gathering specimens from the client, filing required documents through the United States Patent and Trademark Office (USPTO), corresponding with foreign counsel), managing trademark dockets, handling document management, and conducting research.

This non-exempt position is based in the firm’s Dallas office. Haynes and Boone is one of the largest law firms in Dallas. In 2023, Haynes and Boone moved its headquarters to a new 27-story office tower in uptown Dallas. This office attracts high-energy, technically proficient people who enjoy working in a collegial environment. We are committed to having a diverse workforce that reflects our communities, and we seek highly motivated staff and lawyers who value respect and teamwork.

We understand and appreciate that our people are the driving force behind our success. We value the unique role every individual plays in how we deliver exceptional legal services.

Essential Duties

• Assist team with prosecution of U.S. and foreign trademarks supporting attorneys electronically across offices in different states and time zones.

• Oversee all aspects of trademark applications, including transmittal of filings to the USPTO via e-filing (TEAS).

• Assist with preliminary trademark searches as requested.

• Address foreign filings, including sending instructions to foreign counsel, complying with formal requirements, and any necessary follow up.

• Maintain trademark docket from application filing through registration, meeting with attorneys for docket reviews/upcoming deadline coverage and strategy for completion.

• Provide support for domestic and foreign infringement matters, as requested, such as assembling evidentiary material and creating and maintaining tracking reports.

• Draft assignment documents for recordation and meeting country specific requirements, such as notarization and legalization of documents.

• Utilize, search, and research information through the USPTO, WIPO websites, and other trademark online resources.

• Prepare/transmit reporting letters to clients regarding correspondence from USPTO and foreign counsel.

• Following up with clients regarding dates of first use, specimens and renewals.

Other Duties

Perform other related duties as assigned.

Reporting Relationship

The Trademark Paralegal reports to the Office Administrator.

Knowledge/Experience

The ideal candidate should have:

• The ideal candidate should have 3+ years of experience as a trademark paralegal.

• Knowledge of USPTO procedures within TMEP, and CFR, as well as foreign trademark prosecution procedures.

• Experience in conducting trademark clearance searches and in U.S. and foreign jurisdictions.

• Proficiency in computerized docketing systems.

• Proficiency with all MS Office applications.

Skills

• Proficiency with PATTSY, IP Master, or similar docketing systems.

• Strong skills with Microsoft Word, Excel, and PowerPoint.

• Experience with Corsearch and/or CompuMark/SAEGIS preferred.

• Must be able to translate difficult concepts into simple terms.

• Ability to work under tight deadlines and with a variety of work styles.

• Must be able to work with minimal direction with the ability to multitask.

• Must possess excellent verbal and written communication skills, strong analytical skills, and attention to detail.

Education

Paralegal certification from an ABA approved school or bachelor’s degree in a field related to law, administration, or liberal arts required.

Physical Demands

Must be able to move around the office up to 15% of the time to make copies, fax, file, etc. Remains stationary at least 85% of the time; this position constantly operates computers and other office productivity machines (e.g., copier, printer, etc.); occasionally required to move documents or files weighing up to 15 lbs.; this position requires constant communication and exchange of information with attorneys, clients, and staff; this position must be able to inspect and observe information on a computer screen at least 80% of the time.

Working Conditions

Office Environment. Overtime Required.

At Haynes and Boone, our people are the driving force behind our success. Because we value the role every individual plays in how we deliver exceptional legal services, we hire people who will contribute to our professional reputation, enhance client relationships and share in our success.

Haynes and Boone is one of the largest law firms in Dallas, and it continues to grow. In 2023, Haynes and Boone moved its headquarters to a new 27-story office tower in the Harwood District of uptown Dallas. Lawyers in our Dallas office serve all the firm’s practice and industry areas – including corporate, litigation, banking/finance, insurance law, healthcare law, labor and employment, estate planning, real estate, bankruptcy, intellectual property, white collar crime, and antitrust. Our Dallas lawyers are widely recognized in their practice areas in publications such as The Best Lawyers in America directory (Woodward/White, Inc.) and the Chambers USA legal directory (Chambers & Partners). This office attracts high-energy, technically proficient people who enjoy working in a collegial environment. We are committed to having an inclusive workforce that reflects our communities, and we seek highly motivated lawyers and staff who value our culture of respect and teamwork.