Senior Assistant/Clerk – Trademarks Law

September 22, 2022

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Our firm has an immediate opening for a senior Assistant/Clerk with prior experience in Trademarks law. The successful candidate will work with and support a busy trademarks law practice. This position requires a self-starter with the ability to manage multiple tasks and meet critical deadlines. The successful candidate will be organized and detail oriented and must be able to work independently and as part of a team.

Duties and Responsibilities:

  • Prepare drafts of trademark applications, office action responses, statements of opposition, counterstatements, extensions of time and all relevant trademark online documents for filing with the Canadian Intellectual Property Office (CIPO) for trademarks;
  • Conduct preliminary trademarks searches using in-house Clarivate software systems and draft clearance letters based on full searches from search house;
  • Handle daily maintenance of trademark files and diary systems (PattsyWave) including the timely entering and removing of items and managing any necessary follow ups to ensure important deadlines, including for statutory actions, are met;
  • Prepare status reports and ongoing  correspondence for client trademark portfolios;
  • Payment of designated governmental trademark, maintenance and renewal fees and other administrative duties;
  • Preparing drafts of other routine trademark documents (based on precedents);
  • Opening and closing files including conducting initial review of conflict searches for file openings, basic corporate searches, based on electronic filing system and accounting records and prepare retainer letters for new client matters;
  • General administrative duties such as scheduling appointments and meetings, booking meetings and dealing with clients about such;
  • All of the above will be solely online (as the practice is paperless) and supervised by a licensed trademark agent and lawyer.

Qualifications:

  • 10+ years’ relevant trademark experience in a (preferably in hybrid Assistant/Clerk role);
  • Current working knowledge of Trademark legislation and a thorough understanding of trademark terminology and the CIPO online filing system and database, and proficiency with Trademarks Office rules, fee structure and deadlines;
  • Strong technical skills, including but not limited to PattsyWave (or another diary system) and Clarivate software systems, Word and Outlook, document management and accounting software;
  • Attention to detail, timelines, and tracking requirements, focused to meet deadlines;
  • Experience working in a paperless environment;
  • Ability to work independently and with supervision; and
  • Strong under pressure with a professional demeanor and the ability to interact and effectively communicate with individuals at all levels.

Why You Should Apply:

Fogler, Rubinoff LLP offers a congenial work environment, competitive compensation commensurate with experience and a full benefits program. Our benefits include health and dental coverage, competitive vacation packages, referral programs, employee assistance, and employee discount services. When starting at the Firm, new team members are provided a comprehensive training and orientation program. Our Firm strives to continue to nurture the professional development of our members by offering training workshops regularly throughout the year and Lunch & Learn events on a variety of topics on a quarterly basis. 

We look forward to meeting the successful candidate and having a long-term professional relationship. Interested candidates are invited to submit a detailed resume in confidence to hrdepartment@foglers.com. Please include the location where you saw this job posting in your e-mail.

Fogler, Rubinoff LLP is an equal opportunity employer, committed to an inclusive and diverse workplace. We welcome applications from people with diverse backgrounds, identities, cultures and disabilities. Accommodations are available on request for candidates taking part in all aspects of the selection process.

We thank all applicants for their interest, but only those candidates selected
for an interview will be contacted