Foreign Trademark Clerk

1 week ago

Toronto, Canada Smart & Biggar Full time

If you are considering a career in law and intellectual property, there is no better place to be than Smart & Biggar. With our remarkable domestic and international clientele—ranging from fast-growing companies in the high-tech industry, to mid-size Canadian companies and hundreds of international Fortune 500 companies—you will find yourself working on some of the most exciting, complex and commercially important IP matters in Canada.
What We Do.
Smart & Biggar has been at the forefront of intellectual property (IP) and technology law for over 100 years. We practice in every area of IP on behalf of an exceptional international clientele, and we are consistently ranked as Canada’s leading IP firm. We are committed to hiring people with different backgrounds and experience, who represent the best talent in their field.
We are part of the IPH Group. IPH is the Asia Pacific’s leading intellectual property services group, comprising a network of member firms working in eight IP jurisdictions and servicing more than 25 countries. The group includes leading IP firms AJ Park, Griffith Hack, Pizzeys and Spruson & Ferguson and Smart & Biggar. IPH employs across Australia, China, Hong Kong SAR, Indonesia, Malaysia, New Zealand, Singapore, Thailand and Canada
We are passionate about what we do and what we can achieve. The IPH Group is committed to promoting and maintaining a workplace culture of shared respect across companies to enable us all to feel valued and be the best we can be.
Our Toronto is currently recruiting for a Foreign Trademark Clerk
Responsibilities.
- Drafting and sending filing instructions to foreign associates
- Reviewing Filing Notices for accuracy and reporting
- Reviewing and reporting foreign Examiner’s reports and obtaining instructions to respond including necessary follow-up on deadlines
- Instructing foreign associates to respond to Examiner’s reports
- Proofreading and reporting Approval Notices and advertisements
- Reviewing, reporting and instructing foreign associates to respond to Notices of Allowance including reviewing specimens of use if required
- Reviewing Registration Certificates for accuracy and reporting
- Reviewing, reporting and instructing foreign associates to respond to Working Use Notices
- Reviewing, reporting and instructing foreign associates to respond to proof of use requirements including communications with client regarding evidence/affidavits
- Reporting upcoming renewals due dates and instructing foreign associate to pay renewal fees
- Requesting clarifying information from foreign associates
- Preparing estimates using Global IP Estimator
- Arranging for the translation and legalization of documents by foreign consulates
- On-demand billing for tasks mentioned above
- Patricia updates for tasks mentioned above
- Delegating tasks mentioned above to Trademark Help as required in order to meet benchmark turnarounds

Qualifications and experience.
- Legal Assistant Diploma/Certificate or Law Clerk Degree.
- Minimum one-year relevant working experience. Foreign trademark experience required.
- High interpersonal and team-oriented skills.
- Ability to work independently, problem solve and be resourceful.
- Strong attention to detail.
- Computer literate with strong working knowledge of Office Suite (Word, Excel, PowerPoint).
- Familiarity with document management systems an asset.
- Strong verbal and written communication skills.
- Excellent time management and prioritization skills.

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