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Trademark Coordinator

Ottawa

ABOUT GOWLING WLG

At Gowling WLG, our dedication to excellence and quality service begins with our people. As a global law firm with offices across Canada, the U.K., Europe, the Middle East and Asia, we pride ourselves on sourcing and retaining top talent who bring energy, passion and commitment to the delivery of outstanding client service.

When it comes to diversity, we not only accept it — we celebrate it, support it and thrive on it. To create an engaging and rewarding place to work, we seek to attract talented people from a diverse range of backgrounds and cultures. Our aim is to help everyone reach their full potential and achieve their personal and professional goals.

Employee satisfaction is important to us. We work hard to ensure that our people are motivated, engaged and empowered. Our diverse group of legal professionals, law students, law clerks/paralegals, legal administrative assistants and business support staff work together as a team, and are respected and valued for their individual contributions.

PROFILE

Reporting to the Manager, Intellectual Property, the successful candidate will provide support to trademark professionals in the Ottawa Office and clients alike.

RESPONSIBILITIES

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  • Preparing responses to Nice Classification letters from CIPO; including determining, when necessary, any related filings and their classification history; research into client businesses (potentially involving direct client contact when directed by professional); transmitting documents to professional and/or client for approval; preparing on-line submission to CIPO; and preparing reporting letters to client respecting the filing of the responses.
  • Reviewing and drafting reporting letters on any Official Actions relating to classification to clients.
  • Preparing applications for filing in foreign countries; including determining, when necessary, filing requirements; obtaining and preparing necessary documents, such as, Assignments and Power of Attorney documents for execution by client; transmitting documents to client for execution; preparing letter of transmittal to foreign associate with instructions for filing the application; and preparing reporting letters to client respecting the filing of the applications.
  • Updating Intellectual Property in-house database with all necessary notes and data input, including due dates, payments etc.
  • Reviewing and reporting formalities (including Application filing, filing Receipts etc.) to clients for foreign applications.
  • Assisting in resolving work related issues and provides support and mentoring to other members of the team.
  • Initiating follow up actions where and when necessary.
  • Liaising with foreign counsel to obtain and, when directed by the professional, provide information.
  • Reviewing and monitoring daily diary and due case reports and initiating appropriate action where necessary such as sending necessary reminders to clients.
  • Handling all incoming and outgoing mail related to global portfolio; composing letters to incoming correspondence and ensuring that appropriate action is taken.
  • Preparing reports on an as needed basis.

QUALIFICATIONS

  • Ability to communicate effectively with clients and other Firm members, with the aptitude to take care of clients’ needs in a professional and courteous manner
  • Capacity to work independently, as well as in a team environment
  • Produce a high quality and quantity of work product, often under tight timelines
  • Able to prioritize and to redefine priorities when necessary
  • Strong familiarity with Nice Classification and procedure generally at the Canadian Intellectual Property Office (Trade-marks)
  • Knowledge of foreign trademark practice
  • Knowledge of the Intellectual Property in-house database
  • Handle stress in a business-like manner
  • Knowledge of Microsoft Office Suite
  • Law Clerk or Legal Assistant Diploma/Certificate (or relevant work experience)        
  • 3-5 years directly related experience preferred

APPLICATION DETAILS

If you are interested in this opportunity, please send your resume via email to resumes.ottawa@gowlingwlg.com including the job title and the code O1752010 in the subject line.

Gowling WLG is proud to be an equal opportunity workplace. We are committed to offering equal employment opportunities regardless of race or racial group, religion or belief, sex, sexual orientation, age, marital status, disability or gender identity. We foster an inclusive, equitable and accessible environment.

If you have a disability or special need that requires accommodation at any time during the recruitment process, please let us know.

While we appreciate all applications received, only those candidates selected for an interview will be contacted.