Law Clerk – Intellectual Property And Trademarks

About Us:

Cassels Brock & Blackwell LLP is a leading national law firm focused on serving the transaction, advocacy, and advisory needs of Canada’s most dynamic business sectors. We have one of the largest business law practices in the country, serving multinational, national and mid-market clients from our offices in Toronto, Vancouver, and Calgary.

Our Culture:

At Cassels, our mission is to attract, retain and promote individuals of exceptional ability and talent from as broad a range of backgrounds as possible. We offer meaningful career opportunities, invest in professional growth, and foster an inclusive environment. Our Firm’s success is built on the unique skills, perspectives, experiences, and values of each individual. We encourage a corporate culture that respects and celebrates the dignity, value, and diversity of all.

Role Overview:

Our Toronto office is currently seeking an experienced Intellectual Property and Trademarks Law Clerk to support the firm’s Business Law Group. Reporting to the Senior Director of Paralegals and Law Clerks, this individual will assist all trademark lawyers at the firm with the prosecution of Canadian and foreign trademark files, oppositions and with due diligence for intellectual property transactions. The ideal candidate will be an organized and eager professional who possesses great client service skills and a strong work ethic.

The successful candidate will be responsible for:

Canadian Trademark Clerk Duties:

• Preparing and filing assignments, title documents and change of address information with CIPO.
• Reporting advertisement of applications, registration fee notices, issuance of certificates of registration and paying registration fees.
• Reporting issuance of renewal certificate and reporting notice of abandonment to clients.
• Attending to the classification of goods/services pursuant to NICE and the amended Trademarks Act.
• Reporting Examiner reports and suggesting revisions to goods and services objections, filing responses to Examiner’s reports.
• Reminding clients of upcoming due dates, requesting extensions of time and administering foreign filing reminders (priority deadlines) if required.
• Administering reminders for renewal of registrations and renewing registrations.
• Preparing statements of opposition, reviewing opposition correspondence/documents, and entering relevant deadlines, filing Section 45 requests, preparing evidence of use regarding Section 45 proceeding, investigating references in search reports.
• Preparing internal documentation relating to CIPO fees and processing of CIPO mail including the entry/removal of deadlines in PATTSY system.
• Preparing and filing trademark applications and due diligence searches related to intellectual property transactions.

Foreign/US Trademark Clerk Duties:

• Reporting acceptance notices to clients.
• Sending clients renewal reminders and preparing instruction letters to foreign associates and supporting documents.
• Preparing reporting letters to clients and reporting renewal certificates.
• Reporting advertisements and certificates of registration
• Preparing instruction letters to associates (concerning post allowance and post registration).
• Entering due dates for Section 8 & 15 Declarations and renewal applications.
• Monitoring and entering relevant due dates.
• Sending client reminders re: Section 8 & 15 Declarations and renewal deadlines.
• Conducting status check of foreign applications and reviewing documents and recording any relevant BFs and/or deadlines.
• Coordinating Statements of Use and post registration documents with foreign counsel.

The successful candidate must have the following education, experience and/or demonstrated skills:

• Ability to work independently
• Excellent critical thinking skills and problem-solving skills
• 3-5 years of relevant work experience in trademarks
• Law Clerk Diploma/Certificate
• Excellent interpersonal skills
• Excellent time management skills, prioritization, and organizational skills
• Knowledge of legal terminology, procedures, and statutes
• Experience with drafting, prosecuting, and maintaining applications and registrations for industrial designs and related portfolio management would be considered an asset
• Ability to work proactively with lawyers to manage trademark deadlines
• Maturity, consistency of approach and ability to relate to all levels of lawyers and legal professionals
• Strong communication skills (both verbal and written) including the ability to deal with clients, and all levels of lawyers and legal professionals
• Computer literate with strong working knowledge of legal software and standard software (Microsoft Office, PATTSY)

Employment Type: Permanent, Full-Time (Hybrid)

What we offer:

• A business casual dress code (client/day specific)
• RRSP Matching Program
• Fitness Reimbursement Program
• Diversity and Inclusion Centric Culture
• A Culture of Wellness: Cassels recognizes the importance of wellness and provides a comprehensive program that addresses the mental and physical well-being of our employees by providing resources, services, training, and support on an ongoing basis.
• Education/tuition allowance
• A fully stocked kitchen with healthy snacks, plus coffee, tea, and drinks throughout the year.
• Competitive compensation + Extended Health & Dental Care
• A hybrid work environment
• Employee referral bonus.

Cassels is an equal opportunity employer with a strong commitment to diversity, inclusion, equity, and an accessible environment. We encourage applications from all qualified individuals and will provide appropriate accommodation for candidates with disabilities or accessibility needs throughout the recruitment process, upon request. Please contact our recruiter for any questions, accommodations, or specific requests.

We wish to thank all applicants for their interest, however, only candidates selected for interviews will be contacted. We regret that we are unable to respond to individual inquiries about application status, unless required for accommodation purposes.