Trademark Agent

3 days ago

Ottawa, Canada OLLIP P.C. Full time

**About the Firm**:
OLLIP P.C. is a boutique law firm specializing in intellectual property and technology law, located in Ottawa. We protect IP assets for clients of all sizes (whether they be small, trendy local businesses or large multi-national corporations) across the province, country, and the globe.

By offering a broad range of IP experience—brand protection, litigation and appeals, copyrights, domain names, trademarks, industrial designs and mobile and e-commerce products—we have become a leading Canadian IP agency, helping to prepare, file, prosecute, protect and renew IP rights.

**Perks About Working with a Small, Boutique Firm**:
Unlike at larger, full-service firms - where professionals and staff can be hampered by a multitude of procedures and layers of administration - we take a more informal approach to structure. So, you have more independence and your input has an immediate impact. We also do not have billable hour targets. Rather, our focus is client-centric - producing quality work. We provide big firm expertise (with a similar client portfolio range) and a wide breadth of file experience in a smaller and collegial environment.

**The Opportunity**:
We are seeking a motivated, organized, and experienced Trademark Agent (or Junior Lawyer (2+ years post-call) with intentions to pursue the Trademark Agent designation within the next three (3) years) to join the Firm’s Trademark Prosecution & Industrial Design Group. The position is located in Ottawa.

**Responsibilities include**:

- Managing and responding to trademark/industrial design office actions;
- Managing domestic and foreign trademark/industrial design portfolios, analyzing trademark searches and drafting trademark registrability opinions;
- Advising clients on trademark/industrial design matters, including registrability, licensing, and transfers;
- Researching and drafting affidavits, statements of oppositions, written representations, and other filings with CIPO in section 45 cancellation and opposition proceedings;
- Providing trademark/industrial design litigation support;
- Assisting in updating the Firm’s Thomson Reuters loose-leaf publication, Odutola on Canadian Trademark Practice;
- Keeping apprised of developments in trademark/industrial design law, CIPO processes and procedures, and other relevant topics;
- Managing docket systems and maintaining/updating precedents;
- Supervising the work product of a team of law clerks who support the practice;
- Assist in training/mentorship of colleagues and law clerks in the practice group; and
- Other relevant duties as assigned.

**Requisite Qualifications**
- Juris Doctor (J.D.) or other post-secondary education degree preferred
- Trademark Agent Designation with the College of Patent Agents & Trademark Agents (“CPATA”) OR
- Minimum 1-2 years of practice in trademark prosecution matters, with an intention to pursue the Trademark Agent designation within three (3) years from the date of hiring

**Other Skills**:

- Outstanding persuasive drafting skills to convince trademark examiners and/or Board Members in s. 45 cancellation and opposition proceedings
- Prosecution practice management experience preferred, but not required
- Excellent computer software skills, including Microsoft Office, as well as prior experience with legal software (e.g., docketing, document management, and precedent management programs)
- High technological aptitude considered an asset (including review of automated software results, search engine optimization, and other software-driven / computer-automated processes)
- Experience in business development is an asset
- Bilingualism is an asset

**Remuneration**:
Salary commensurate with other small IP boutique firms in Ottawa, ON, as well as experience of applicant. Negotiable.

**Benefits**:

- No billable hour requirement
- Work-Life Balance
- Relaxed dress code
- Coverage of CPATA professional and insurance fees
- Health & Dental Benefits
- Life & Disability Benefits
- 3 weeks’ vacation

**How to Apply**:

- Cover letter (addressed to Bayo Odutola, Managing Principal of Ollip P.C.);
- Post-secondary education transcripts (mandatory), as well as law school transcript (if applicable);
- Sample of a filed response to a trademark examiner’s report arguing against registrability/entitlement/distinctiveness objection(s);
- Sample of filed written representations in opposition proceedings (if available);
- Sample of filed written representations in section 45 cancellation proceedings (if available);
- Sample filed an affidavit in either a section 45 cancellation OR opposition proceeding (if available); and

**OLLIP P.C.’s Response to COVID-19**:
**Deadline**:

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