Intellectual Property and Trademarks Law Clerk

2 days ago

Toronto, Ontario, Canada Cassels Brock & Blackwell LLP Full time
About Us

Cassels Brock & Blackwell LLP is a leading national law firm focused on serving the transactional, advocacy, and advisory needs of Canada's most dynamic business sectors. We have one of the largest business law practices in the country, serving multinational, national, and mid-market clients from our offices in Toronto, Vancouver, and Calgary.

Our Culture

At Cassels, our mission is to attract, retain, and promote individuals of exceptional ability and talent from as broad a range of backgrounds as possible. We offer meaningful career opportunities, invest in professional growth, and foster an inclusive environment. Our Firm's success is built on the unique skills, perspectives, experiences, and values of each individual. We encourage a corporate culture that respects and celebrates the dignity, value, and diversity of all.

Role Overview

Our Toronto office is currently seeking an experienced Intellectual Property and Trademarks Law Clerk to support the firm's Business Law Group. Reporting to the Manager, Intellectual Property Services, Trademark and Copyright, this individual will assist all trademark lawyers at the firm with the prosecution of Canadian and foreign trademark files, oppositions, and with due diligence for intellectual property transactions.

Key Responsibilities

The successful candidate will be responsible for:

  • Preparing and filing trademark applications.
  • Due diligence searches related to intellectual property transactions.
  • Preparing and filing assignments, title documents, and change of address information with CIPO.
  • Reminding clients of upcoming due dates.
  • Requesting extensions of time; administering foreign filing reminders (priority deadlines) if required.
  • Reporting Examiner reports and suggesting revisions to goods and services objections, filing responses to Examiner's reports.
  • Attending to the classification of goods/services pursuant to NICE and the amended Trademarks Act; reporting advertisement of applications.
  • Reporting registration fee notices.
  • Paying registration fees.
  • Reporting issuance of certificates of registration.
  • Administering reminders for renewal of registrations.
  • Renewing registrations; and reporting issuance of renewal certificate.
  • Reporting notice of abandonment to clients.
  • Preparing statements of opposition, reviewing opposition correspondence/documents, and entering relevant deadlines, filing Section 45 requests, preparing evidence of use regarding Section 45 proceeding, investigating references in search reports.
  • Preparing internal documentation relating to CIPO fees.
  • Processing of CIPO mail including the entry/removal of deadlines in PATTSY system.
Foreign/US Trademark Clerk Duties

The successful candidate will also be responsible for:

  • Monitoring and entering relevant due dates.
  • Reporting advertisements; reporting certificates of registration.
  • Sending clients renewal reminders.
  • Preparing instruction letters to foreign associates and supporting documents.
  • Conducting status check of foreign applications and reviewing documents and recording any relevant BFs and/or deadlines.
  • Preparing reporting letters to clients.
  • Reporting renewal certificates.
  • Sending client reminders re: Section 8 & 15 Declarations and renewal deadlines.
  • Coordinating Statements of Use and post registration documents with foreign counsel.
  • Entering due dates for Section 8 & 15 Declarations and renewal applications.
  • Preparing instruction letters to associates (concerning post allowance and post registration).
  • Reporting acceptance notices to clients.
Requirements

The successful candidate must have the following education, experience, and/or demonstrated skills:

  • Law Clerk Diploma/Certificate.
  • Knowledge of legal terminology, procedures, and statutes.
  • 3-5 years of relevant work experience in trademarks.
  • Experience with drafting, prosecuting, and maintaining applications and registrations for industrial designs and related portfolio management would be considered an asset.
  • Computer literate with strong working knowledge of legal software and standard software (Microsoft Office, PATTSY).
  • Excellent interpersonal skills.
  • Excellent time management skills, prioritization, and organizational skills.
  • Ability to work independently.
  • Excellent critical thinking skills and problem-solving skills.
  • Ability to work proactively with lawyers to manage trademark deadlines.
  • Strong communication skills (both verbal and written) including the ability to deal with clients, and all levels of lawyers and legal professionals.
  • Maturity, consistency of approach, and ability to relate to all levels of lawyers and legal professionals.

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