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IP/Trademark Clerk

Office

Toronto

Posting Date

November 19, 2021

Position type

Permanent

At McCarthy Tétrault, we offer challenging and rewarding career opportunities and are delighted to have been selected as one of Canada’s Top 100 Employers for the tenth consecutive year in 2022, as well as one of Canada’s Best Diversity Employers. Our culture is built on professional excellence, collaboration, innovation, thought leadership and entrepreneurialism. We embrace inclusion in all its forms and we provide the tools and opportunities to help our people develop to their full potential.

As a Trademark Clerk, you will be:

  • Maintaining PATTSY – used to capture all due dates in Trademark and general matters (e.g. the dates by which foreign applications may be filed under an international convention to claim priority, due dates for responses to objections from the Trademarks Office, due dates for filing declarations of use and paying registration fees; deadlines in opposition matters, Section 9 applications, Section 45 proceedings, domain names and renewals).
  • Reviewing daily incoming mail/fax and emails and updating PATTSY accordingly; printing updated PATTSY sheets and pulling requested files.
  • Reviewing Trademark and general files for extensions and completed actions (i.e. responses, renewals), and updating PATTSY accordingly; printing updated PATTSY sheets for these files.
  • Preparing status reports for clients and/or foreign associates and other reports as may be requested by the Patent and Trademark Agents.
  • Generating weekly consolidated docket lists for the Patent and Trademark Agents.
  • Managing the daily Canadian Intellectual Property Office (CIPO) packages for Patents and Trademarks and providing Accounting Clerk with copies of the daily CIPO cover letters.
  • Monitoring daily due dates of the Patent and Trademark Agents for CIPO filings.
  • Maintaining a revolving list of Trademark Agents for new incoming work.
  • Providing Compumark (watch service provider) a monthly updated list generated by PATTSY Database, of all active-filed Canadian and U.S. Trademarks for each of Toronto, Vancouver, Montréal and Québec Offices.
  • Maintaining and updating the list of Trademark applications mandated by Toronto clients, being watched for by Compumark (trademarks not found on PATTSY database).
  • Reviewing and processing the weekly Canadian and US Trademark mandated watch reports.
  • Generating report out letters to clients (re: certificates of registrations and renewals).
  • Preparing letters and necessary documentation for submission to CIPO regarding revocation and/or appointment of agent and representative for service or assignment, and/or changes in owner’s name and/or address as may be requested.
  • Conducting basic Canadian and U.S. Trademark searches using SAEGIS and on-line databases provided by the CIPO, U.S. and foreign Patent and Trademark Offices.
  • Setting up and/or revising standard form letters in PATTSY.
  • Handling the Intellectual Property Institute of Canada annual exchange of Patent and Trademark tariffs.
  • Supervising IP Support Clerks in processing new matters in PATTSY; assisting clerk in preparing letters regarding transfer of files (internal and external).
  • Monitoring the desk of other IP Support Clerks in their absence; and acting on urgent matters as required.
  • Keeping abreast of the changes in Trademark rules and regulations in Canada.
  • Providing assistance to the other offices on Trademark matters and PATTSY data entries as may be requested.

Canadian and Foreign Trademark Renewals

  • Monitoring renewal deadlines; preparing and sending to clients for Patent and Trademark Agent (for Partner, Intellectual Property only).
  • For other Patent and Trademark Agents - preparing initial reminder letters to clients.
  • Conducting numerous searches to obtain clients’ and/or owners’ current contact information using the firm’s various resources, database software and applications, and if necessary contacting them for confirmation.
  • Obtaining copies of Canadian, U.S. and foreign register pages using Compumark and on-line databases provided by the CIPO, U.S. and foreign Patent and Trademark Offices.
  • Paying Canadian renewal fees via on-line; preparing fee payment forms and generating report out letters to clients.
  • Prepare and file requests for reclassification of goods and services.
  • Preparing renewal letters and necessary documentation (for renewals with changes to owner’s name, address and/or appointment as representative for service) for submission to CIPO.
  • Assisting the Patent and Trademark Agents and the legal assistants in the filing of foreign registration renewals.
  • Maintaining and updating the list of all registered Trademarks and  generating monthly Trademark renewal summary reports.

As our ideal candidate, you will have:

  • Completion of a university degree, college diploma, or equivalent work experience.
  • Three to five years of previous Trademark experience.
  • Great attention to detail and accuracy.
  • Excellent organizational skills.
  • Exceptional written and oral communication skills.

As a member of the McCarthy team, you will have access to:

  • Outstanding benefits from day one, including insurance premiums paid by the Firm and wellness and technology reimbursements.
  • Competitive compensation and generous time off, including a day off to volunteer and a day off for your birthday.
  • A commitment to professional development and growth opportunities for our people at all levels, supported by a culture that fully embraces and encourages two-way feedback.
  • Strong community involvement and a commitment to equity, diversity and inclusion.
  • A collaborative, cohesive culture that connects lawyers and business teams through collective purpose.

How to apply:

We invite you to submit your application to [email protected]. We thank all applicants for their interest in McCarthy Tétrault; however, only chosen applicants will be contacted. We regret that we are unable to respond to individual inquiries about application status. McCarthy Tétrault is an equal opportunity employer that fosters an inclusive, equitable, and accessible environment. Please notify us if you require accommodation at any time during the recruitment process.

Vaccination Policy:

Please note that, applicants who receive a conditional offer of employment from McCarthy Tétrault will be required to provide proof that they are fully vaccinated with a COVID-19 vaccine approved by Health Canada as a condition of employment and to maintain their status as fully vaccinated as a condition of continued employment. McCarthy Tétrault will consider individual requests for accommodation by applicants who cannot be fully vaccinated due to health or other grounds.