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Clerk, Trademarks

Reference #: CTM_-_06-21-21
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Open Date    June 21, 2021
Close Date    July 9, 2021

The Toronto office of Borden Ladner Gervais LLP (BLG), a leading, innovative and client-focused law firm in Canada, is seeking a Clerk, Trademarks.

Purpose of the Role

The Clerk, Trademarks 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 our clients by the Intellectual Property group.

Key Responsibilities

The Clerk, Trademarks 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. The Clerk, Trademarks is responsible for meeting the requirements of the role.

The key responsibilities of this role are:

  • 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
  • Other Clerk, Trademarks duties as required
  • 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.

Key Competencies

  • 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

How to Apply

We thank all applicants for their interest in this position, however, only applicants selected for an interview will be contacted.

Everyone at BLG is required to carry out the duties of their role while upholding the important principles of our respectful workplace policies, and treating everyone with respect, regardless of position. At BLG, valuing diversity and inclusion is key to a respectful workplace.

BLG is committed to fostering a diverse and inclusive workplace. We welcome and encourage applications from diverse candidates, including people with disabilities. Accommodations are available on request for candidates taking part in all aspects of the selection process.

*Please note that relatives of current BLG employees and partners are not eligible for consideration.