Job Summary
We are seeking an experienced Trademark Clerk to carry a full trademark prosecution and opposition workload. This is not an entry-level position. The successful candidate will independently manage a portfolio of Canadian, US, and international trademark matters from filing through registration and maintenance, prepare first drafts of substantive responses, and coordinate international filings through foreign associates — working from deadlines maintained by our docketing clerk rather than managing the docket directly. The role requires sound procedural judgment, the ability to identify when a matter needs an agent's attention, and the confidence to work with limited supervision in a remote environment. All substantive prosecution work is performed under the supervision of a registered trademark agent.
Duties
Trademark Prosecution
- Independently manage an assigned portfolio of Canadian, US, and international trademark matters from filing through registration, maintenance, and renewal
- Prepare and file Canadian and US trademark applications with subsequent client reporting, including classification of goods and services under the Nice Classification, preparation of representations of the mark, colour claims, translations and transliterations, distinctiveness and use particulars, and priority claims
- Prepare and file applications for certification marks and official marks, and for non-traditional marks including sound, colour, three-dimensional, and holographic marks, together with the supporting materials each requires
- Prepare first drafts of responses to examiner's reports and office actions, including responses raising confusion, descriptiveness, and non-distinctiveness objections, together with supporting exhibits and evidence of use — for agent review and signature
- Prepare and file requests for extension of time, voluntary amendments, divisional applications, and requests to record changes
- Manage government fee payments across CIPO, USPTO, and WIPO, including fee calculation across classes and filing types, processing through deposit and pre-authorized accounts, obtaining and filing payment confirmations, and reconciling payments against instructions given
- Coordinate with foreign associates for international trademark filings, national and regional applications, Madrid Protocol designations, and responses to foreign office actions; instruct associates, review incoming reporting for consistency with our records, and query discrepancies
- Prepare and file Madrid Protocol documents through CIPO or the International Bureau, including international applications, subsequent designations, recordals of change, transformations, replacements, and international renewals; resolve irregularity notices
- Prepare and file US maintenance and post-registration documents, including Statements of Use, Requests for Extension of Time to File a Statement of Use, Declarations of Use and Incontestability under Sections 8 and 15, Section 9 renewals, and Section 71 affidavits for extensions of protection
- Collect, assess, and prepare specimens of use; advise the responsible agent where specimens appear deficient; assist in responding to post-registration audits
- Manage the renewal program for assigned portfolios, including fee calculation across classes, grace period tracking, and client renewal reporting
- Prepare formal documents including assignments, changes of name, mergers, powers of attorney, appointments and revocations of agent, licence recordals, security interests, and declarations for filing at CIPO and USPTO
- Reconstruct and verify chain of title across multiple jurisdictions and prepare recordal packages to correct register discrepancies
- Conduct availability, screening, and status searches through the Canadian Trademarks Database, USPTO Trademark Search and TSDR, WIPO Global Brand Database and Madrid Monitor, TMview, and corporate name and domain registries; prepare structured search summaries for agent review
- Monitor trademark watch service reports, triage results, and escalate potential conflicts with a preliminary assessment
- Conduct portfolio reviews and prepare summaries identifying gaps, redundancies, lapsed rights, and upcoming decision points for client discussion
Opposition & Cancellation Proceedings
- Manage the procedural lifecycle of oppositions, section 45 proceedings, and US cancellation and opposition matters, tracking each stage against the applicable deadline structure
- Prepare and file statements of opposition, counter statements, extensions of time, cooling-off requests, and requests for leave, under the direction of the responsible agent or counsel
- File electronically through CIPO online services and ESTTA and confirm receipt and register status
- Coordinate evidence preparation, including affidavit and declaration exhibit assembly, pagination, commissioning and notarization logistics, and service on the opposing party
- Schedule and coordinate cross-examination, and assemble transcripts and undertakings
- Prepare and compile written argument packages, books of authorities, and hearing materials
- Prepare chronologies and evidence summaries to support the responsible agent's analysis
- Monitor settlement and consent discussions for procedural impact and ensure filings reflect agreed terms
Client, Precedent & Team Support
- Prepare stage-based reporting letters to clients at filing, examination, approval, advertisement, allowance, and registration, setting out status, next steps, and available options
- Draft professional correspondence with the Trademarks Office and the USPTO using existing precedents, ensuring clarity and compliance with relevant standards
- Serve as a day-to-day point of contact for clients on procedural and status questions, referring substantive questions to the responsible agent
- Coordinate document execution and signature collection from clients with appropriate follow-up
- Review and quality-check work prepared by junior staff, and provide training and guidance on trademark procedures and firm workflows
- Maintain and improve precedent documents, checklists, and filing procedures; propose process improvements where recurring issues are identified
- Prepare detailed invoices and accounts for completed matters, including disbursement tracking and foreign associate cost pass-through
- Process and submit foreign associate invoices to accounting department, reconciling against instructions given
- Process new client onboarding including KYC requirements, conflicts checking, engagement letters, and file opening
- Maintain accurate matter records and file organization following standardized naming conventions
- Maintain confidentiality of all client information and privileged communications
Required Qualifications
- Minimum 5 years of trademark experience in a law firm, IP boutique, or in-house IP department, including at least 3 years in trademark prosecution
- Demonstrated ability to manage a portfolio of trademark matters independently, with limited day-to-day supervision
- Solid working knowledge of Canadian and US trademark prosecution procedure, including examination, maintenance, and renewal requirements
- Working knowledge of Canadian opposition and section 45 procedure and the associated deadline structure
- Strong working knowledge of the Nice Classification system and the preparation of goods and services statements
- Experience preparing first drafts of substantive office action and examiner's report responses
- Experience managing government fee payments and reconciling official fees across jurisdictions
- Experience with IP management software and document management systems
- Excellent proofreading abilities and knowledge of legal terminology
- Strong written and verbal communication skills, including direct client contact
- Sound judgment in identifying which matters require escalation to a registered trademark agent
- Ability to work independently in a remote environment while managing competing deadlines across multiple jurisdictions
- Strong computer skills including advanced proficiency in Microsoft Office Suite (Word, Excel, Outlook)
- Ability to handle confidential information with discretion and maintain professional conduct
- Must be legally authorized to work in Canada
Preferred Qualifications
- Certified Canadian Trademark Administrator (CCTA) designation, or completion of the IPIC Trademark Administrator Program
- Diploma in Legal Assistant, Law Clerk, or Paralegal Studies from an accredited Canadian institution
- Experience with specific IP management software (e.g., Alt Legal, Equinox, Pattsy, Patricia, Foundation IP, or similar)
- Knowledge of CIPO, USPTO, WIPO, and EUIPO online filing systems and databases, including CIPO Trademarks e-Filing and online services, USPTO Trademark Center, TSDR, ETAS and ESTTA, and WIPO eMadrid
- Substantive experience with the Madrid Protocol, including subsequent designations, central attack and transformation, replacement, and dependency periods
- Experience with certification marks, official marks, and non-traditional marks
- Experience with US post-registration maintenance, specimen sufficiency, and audit responses
- Experience supporting contested proceedings before the Trademarks Opposition Board or the TTAB
- Experience with worldwide trademark prosecution and instructing foreign associates
- Experience with trademark watch services and clearance search reporting
- Experience training or supervising junior clerks or assistants
- Experience with accounting software and billing systems (e.g., QuickBooks, PCLaw, Clio)
- Knowledge of document management systems (e.g., iManage, NetDocuments)
- Bilingual (English/French) considered a strong asset
We are committed to employment equity and diversity in the workplace and welcome applications from women, visible minorities, Indigenous peoples, persons with disabilities, persons of diverse sexual orientation and gender identities, and all other qualified individuals. We are dedicated to providing an inclusive and barrier-free work environment, beginning with the hiring process. If you require accommodation at any stage of the application process, please let us know.
Join our team as a Trademark Clerk where your contributions will be valued, and your skills will help drive our success in supporting innovation and intellectual property protection in Canada and worldwide.
Pay: $65,000.00-$80,000.00 per year
Benefits:
- Casual dress
- Disability insurance
- Employee assistance program
- Extended health care
- Life insurance
- Paid time off
- Vision care
- Work from home
Experience:
- trademark prosecution: 3 years (required)
Language:
- English (required)
- French (preferred)
Location:
Work Location: Remote
