Law Clerk – Trademarks | Toronto, ON

Law Clerk – Trademarks | Toronto, ON

In this position as Trademarks Clerk, you will be part of a team of two Trademark Clerks supporting the busy, international trademark practice of a Partner, and will contribute to the overall excellent level of service provided to clients by the Intellectual Property group.

Summary of Responsibilities:

The Trademarks Clerk will assist with the filing and prosecution of trademark applications, as well as trademark opposition and summary non-use cancellation proceedings, and other trademark dispute files.

  • Draft and file on-line Canadian trademark applications
  • Assist with the preparation of emails instructing filing of trademark applications in other jurisdictions
  • Draft emails reporting Canadian and foreign application filing particulars
  • Draft and file revised Canadian applications and office action responses, and reporting emails
  • Assist with the preparation of emails to foreign agents to provide instructions for the prosecution of foreign applications
  • Check and report approval notices and advertisements
  • Pay registration fees, and receive, check, and forward certificates of registration, prepare cover emails
  • Renew Canadian trademark registrations online, and draft and file online classification requests
  • Prepare tailored trademark status reports for clients
  • Assist with the preparation of correspondence and evidence in oppositions, summary cancellation proceedings, and other dispute matters
  • Assist in the management of due dates for a Trademark Partner, and follow up with clients when needed
  • The role works closely with the Agents/Lawyers and may be asked to provide back up to other team members and assist with other related duties, as required.

Core Skills & Requirements:

  • Law Clerk diploma or university degree with legal studies
  • Minimum of 3 years of experience as Trademark Clerk
  • Proven experience effectively handling prosecution and dispute files
  • Experience using an IP docketing and practice management system
  • Proficiency in MS Office (specifically, MS Word and Excel and PowerPoint)
  • Excellent written and verbal communication skills
  • Strong organizational skills and time management skills
  • Ability to work well independently and as part of a collaborative team
  • Flexibility, good judgment and initiative, ability to prioritize and take ownership for assigned responsibilities
  • Demonstrated focus, with ability to pay close attention to detail
  • Demonstrated ability to problem solve and recommend/implement solutions
  • Availability to work overtime, when necessary

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