Trademark Clerk

START DATE:
As soon as possible

LOCATION:
Remote or Hybrid

A BIT ABOUT US

PCK Intellectual Property ("PCK") is a leading boutique IP firm known for its exceptional trademark and patent prosecution expertise, acting directly before the USPTO and WIPO. We work with clients across Canada, the U.S., and Europe, protecting trademark rights and innovations in software, telecommunications, medical devices, mechanical engineering, chemistry, and more. Our co-founders are authors of Canadian Patent Law (5th edition), a treatise cited by the Supreme Court of Canada, reflecting our thought leadership in IP law.

We value diversity, equality, and inclusion, and we foster a positive, supportive workplace where every team member can thrive.

THE OPPORTUNITY

As PCK continues to grow, we are looking for a Trademark Clerk who is passionate about building lasting client relationships and making meaningful contributions. Responsibilities include but are not limited to:

• Canadian Applications:
  Prepare and file Canadian trademark applications, including required forms and supporting documents. Manage additional submissions to CIPO, such as responses to Office Actions, transfers or other file updates. Ensure compliance with intellectual property laws.
• CIPO Correspondence Management:
  Monitor and report on CIPO communications such as filing notices, proof sheets, Office Actions, approval notices, application advertisements, registration certificates, and reclassification notices. Manage classification filings and provide timely client updates.
• Client & Administrative Support:
  Correspond with clients and foreign associates and handle accounting-related duties.
• U.S. Applications:
  Support the filing, prosecution, registration, renewal, and management of USPTO trademark cases. This includes preparing transfers, responding to Office Actions, handling suspension inquiries, and maintaining proactive client communication.
• Foreign Applications:
  Open cases and coordinate filing and prosecution instructions with foreign associates while efficiently managing file organization and client inquiries.
• Operations & Compliance:
  Provide clerical support for cancellations, oppositions, copyright, licensing, and enforcement; prepare retainers and status reports; conduct conflict checks; and ensure regulatory compliance by updating files.
• Document & Deadline Management:
  Review, analyze, and docket correspondences and documents; maintain databases and computerized records; and monitor deadlines while managing multiple priorities.
• Perform any additional tasks as assigned and commensurate with the role.

THE SKILL SET

• A minimum of 5 years' experience in trademark prosecution is preferred.
• Law clerk experience is an asset, including familiarity with legal terminology and procedures.
• Familiarity with intellectual property and legal docketing systems.
• Demonstrated enthusiasm and aptitude for leveraging advanced legal technology.
• Advanced proficiency with Microsoft Office and related software.
• Exceptional client service with strong interpersonal, verbal, and written communication skills.
• Meticulous attention to detail, proven multitasking abilities, and excellent organizational skills.
• The energy and resilience to thrive in a fast-paced environment under pressure.
• A demonstrated commitment to confidentiality and professional standards.
• A positive attitude, passion for success, and the flexibility to adapt to change.

BENEFITS

• Competitive benefits, including health, dental, life insurance, and an employee assistance program.
• 3-4 weeks' vacation depending on seniority, 4 personal days, and your birthday off.
• Hybrid setting and casual dress.
• Company events and a casual, friendly work culture.

PCK is committed to accessible employment practices that are in compliance with the Accessibility for Ontarians with Disabilities Act ('AODA'). If you require accommodation for a disability during any stage of the recruitment process, please notify us at .

We thank all applicants for their interest; only those selected for further consideration will be contacted.