Trademark Assistant

Bennett Jones - Toronto, ON (4 months ago)

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Toronto - Trademark Assistant

Essential Functions:
File intake including file opening, creation of physical files and maintenance of files
Deadline report generation; file, deadline and database management; portfolio chart creation and maintenance
Proactively managing and entering due dates for Canadian, US and international trademark applications and registrations
Preparing and sending deadline reminders to clients, monitoring responses and taking appropriate action
Monitoring and responding to emails received, sorting and prioritizing new mail
Monitor Canadian trademarks journal for advertisements
Client reporting: Report advertisements; report Notice of Allowance, preparation of Declaration of Use; review and report registration
Report Section 45 Notices
Prepare and file assignments, name changes, status inquiries, requests for extensions of time, formalities with relevant government agencies
Maintaining and entering VISA disbursements for official filings
Management of all aspects of Canadian trademarks 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 substantive objection reports
Review client provided specimens for use of marks
Reviewing client instructions and taking appropriate action with the direction of the professional
Review client websites and provide recommendations with regard to proposing goods and services for new applications
Review client information and documentation for acceptable use
Classification of goods and services
Manage US and international trademarks including corresponding with foreign associates, preparing filing instructions, reviewing and reporting official actions, providing instructions for associate responses, maintenance and renewals
Trademark searches and report preparation – Canada, US, International trademark databases
Ordering trademark searches and government file histories
Preparing first drafts of opinions using standard precedents
Other duties and projects as assigned by professionals

Qualifications:
Legal Assistant Diploma/Certificate or Law Clerk Degree
Five years of relevant trademarks experience working experience
Familiarity with IP4 or other IP docketing and management software
Experience working with patents an asset
Strong working knowledge of legal software and standard MS Office software (Word, Excel, PowerPoint)
Excellent interpersonal skills
Exceptional ability to work in a team environment
Proactive problem-solving skills
Strong communication skills (verbal and written)
Excellent attention to detail and work product presentation
Maintains professionalism, confidentiality and discretion
Efficient time management, prioritization and multitasking skills
Excellent and proactive organizational skills
Apply To

Human Resources
Bennett Jones Services Limited Partnership
3400 One First Canadian Place
P.O. Box 130
Toronto, ON M5X 1A4

E-mail: hrdepttor@bennettjones.com

All offers of employment are conditional upon the satisfactory verification of a Canadian criminal record check. Determination of the factors that constitute satisfactory verification is within the sole discretion of Bennett Jones.

This position will remain open until a suitable candidate is found.

Bennett Jones is committed to providing accommodations throughout the recruitment process in accordance with the Accessibility for Ontarians with Disability Act, 2005. If you require accommodations, please notify us and we will work with you to meet your needs. We are proud to be an equal opportunity employer.