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Firm Overview
Marks & Clerk is one of the world's leading intellectual property (IP) firms, with our first Canadian office being established in Ottawa in 1921. We specialize in all areas of intellectual property law – trademarks, copyrights, patents, designs, and related matters, as well as IP enforcement and litigation.
Through a global network of 15 offices in Canada, the UK, Europe and Asia and long-established relationships with other trusted IP firms worldwide, we have the unique ability to secure and enforce IP rights for clients looking to safeguard their brands, innovations and intangible assets in multiple jurisdictions. Our clients come from a diverse range of industries and include start-ups, small and medium sized businesses and large multi-national corporations who have long trusted us to deliver high quality, seamless and cost-effective services both in Canada and globally.
We are looking to add additional talent to join either our Ottawa or our Toronto Office. In particular, we have an immediate opportunity for a Trademark Clerk to join our dynamic, collaborative team. Our Trademark Clerk team collaborate with our Trademark Agents to prepare and prosecute Canadian trademark applications and maintain Canadian trademark registrations. For example, they provide support with respect to goods and services and other technical objections, as well as recordals and classifications.
Experience:
· Two to five years relevant trademark working experience
· Experience with the trademark process including application preparation, filing, prosecution, registration, renewal, and management of trademark portfolios
· Draft office action reports and responses, including goods and services recommendations and technical objection reports
· Draft assignments and other title recordals, as well as address changes
· Classification of goods and services
· Preparing first drafts of opinions using standard precedents
· Review client provided specimens for use of marks
· Review client instructions and take appropriate action with the direction of the professional
Qualifications:
· Legal Assistant Diploma/Certificate or Law Clerk Degree
· Certified Canadian Trademark Administrator qualification from the Intellectual Property Institute of Canada (IPIC) would also be an asset
· Familiarity with IP docketing and DMS software - familiarity with Inprotech and iManage would be an asset
· Proven experience working in trademark environment
· Familiar with the Canadian Intellectual Property Office's Goods and Services Manual, and accompanying provisions in its Trademarks Examination Manual
· Strong working knowledge of legal software and standard MS Office software (Word, Excel)
· Proactive, problem-solving skills
· Solid time management skills, and ability to work on assignments from multiple professionals
· Excellent attention to detail and work product presentation
· Bilingual – French and English would be an asset.
If you are interested in this opportunity, please submit your resume and cover letter, in confidence to -
Marks & Clerk is an equal opportunity employer and will provide accommodations during the recruitment process upon request.
Currently, M&C firm members are in a hybrid arrangement, working 1 to 2 days a week in the office and the balance of the week at home. The goal is to provide firm members with a practical work-life balance.
We thank all applicants for their interest; however, only candidates under consideration will be contacted.
No agencies please.
Job Types: Full-time, Permanent
Benefits:
- Dental care
- Extended health care
- RRSP match
Work Location: Hybrid remote in Ottawa, ON K1P 1A4
