Trademark Paralegal

Baker, Donelson, Bearman, Caldwell, and Berkowitz, PC has an immediate opening for an experienced trademark paralegal in Atlanta, GA. The trademark paralegal will assist attorneys in all aspects of domestic and foreign trademark transactions, including activities such as obtaining information from clients, background trademark searches, filing registration forms with the United States Patent and Trademark Office and the Trademark Trial and Appeal Board, responding to office actions from the USPTO, and communicating with trademark colleagues in other countries for clients, as well as other duties associated with providing paralegal support for our clients’ trademark matters.

Responsibilities and Duties

• Performs domestic and foreign trademark searching and clearance using searching databases.
• Prepares and files US trademark applications and maintain documents.
• Drafts and files documents for proceedings before the TTAB.
• Communication with clients to obtain required information and specimens for filings.
• Docket review and prepare and send reports and reminders to clients and attorneys.
• Managing reports and deadlines for foreign trademark prosecution and opposition and cancellation proceedings.
• Communicates with trademark colleagues in Firm offices and in relationship firms in other countries concerning client trademark matters.
• Conducts initial investigations and drafts cease and desist letters and exhibits.
• Performs trademark due diligence prior to mergers and acquisitions and preparation of exhibits.
• Supports client development activities and International Trademark Association (INTA) activities.
• Performs other work-related duties as may be assigned from time to time.

Knowledge, Skills, And Abilities

• 4 year college degree and/or paralegal certificate from an ABA-approved program.
• 3-5 years of formal trademark paralegal experience is required. Experience working as a trademark paralegal in a large law firm or corporate law department is required. Experience in multinational or global law firm a plus.
• Strong working knowledge of US and international trademark law and practice including filings under the Madrid Protocol; searching and clearing experience; familiarity with docketing databases. Experience with copyrights is a plus. Experience with copyrights is a plus.
• Knowledge of legal principles and practices at a level normally acquired through formal paralegal training or its equivalent.
• Ability to organize and prioritize numerous tasks and complete them under time constraints.
• Excellent written and interpersonal communication skills; and ability to proofread typed material for contextual, grammatical, typographical or spelling errors.
• Interpersonal skills necessary in order to communicate and follow the instruction of assigned attorney, handle confidential and sensitive information with appropriate discretion, and provide information with professional courtesy and tact.
• Work requires a high level of organization and attention to detail, and maintaining a high volume of matters.
• Ability to work both independently and collaboratively with a business-oriented service disposition.
• Ability to anticipate problems and issues and exercise independent, sound, and reasonable judgment for resolution.
• Performs other duties as assigned.
• Work occasionally requires more than 40 hours per week to perform the essential duties of the position.

Baker Donelson a full-service firm of more than 650 attorneys in 21 offices, and is an established firm that was founded more than 132 years ago.

Our award-winning IP Team has successfully represented clients in federal court, at the appellate level, and before the United States Supreme Court. Baker Donelson’s Intellectual Property Group is responsible for the protection, enforcement, and maintenance of trademarks and other forms of intellectual property for clients ranging from startups to Fortune 500 companies, within the United States and throughout the world. We have a robust IP Team, with an exceptional depth of knowledge and broad scope of practice to ensure expert and efficient guidance for our clients. Our attorneys have a reputation for a practical, common sense business approach to client concerns, coupled with sophistication in a wide range of technical areas. We manage client assets in the context of comprehensive business and competition strategies.

Baker Donelson is committed to its team members and clients, which is the foundation for retention and consistency for providing excellent client service and trusted relationships. Our firm is nationally-recognized for its client service, and is regularly recognized by Forbes as a Best Companies to Work For.

Baker, Donelson, Bearman, Caldwell, & Berkowitz, PC is an equal opportunity employer and all qualified applicants receive consideration for employment and all employees are treated during employment without regard to race, color, sexual orientation, religion, sex, age, national origin, genetic information, physical or mental disability, veteran status, gender identity and marital status. Candidates must provide minimum authorization to work in the United States. Resumes only accepted for job posted.

We appreciate your interest in the position. Please note that after our hiring committee has considered all candidates for this position, we will reach out only to those who will be moving on to the next step in our recruiting process. Accordingly, we appreciate your understanding that we will only contact you if further action is necessary.