Trademark Database Administrator

Osler Tax Group; Toronto; Hybrid; CAD 50,000 - 80,000; Full time

Job summary

An established industry player is seeking a Trademark Database Administrator to support its Intellectual Property department. This full-time role involves managing trademark matters, ensuring accuracy in legal correspondence, and maintaining critical deadlines. The ideal candidate will have a college diploma and at least three years of experience in the Intellectual Property sector, demonstrating strong organizational skills and a solid understanding of trademark practices. Join a dynamic team that values innovation and collaboration while working in a hybrid environment that balances office presence with remote flexibility.

Qualifications

• Minimum 3 years’ experience in Intellectual Property Industry required.
• Strong knowledge of legal procedures relating to Trademark practices.

Responsibilities

• Manage Trademark and Opposition matters in the database.
• Track deadlines and generate reports for the IP team.
• Ensure accuracy of correspondence from the Canadian Intellectual Property Office.

Skills

Microsoft Office

Knowledge of Trademark practices

Organizational skills

Verbal communication

Ability to learn new systems

Ability to work independently

Education

College diploma

Tools

Inprotech

CIPO trademark online filing system

Job description

Osler, Hoskin & Harcourt LLP is one of Canada’s leading business law firms. Advising many of Canada’s corporate leaders, as well as U.S. and international parties with extensive interest in Canada, our more than 1,000 firm members are based in offices in Toronto, Montréal, Ottawa, Vancouver, Calgary and New York.

Osler prides itself on attracting and maintaining some of the brightest talent in the legal field. Our lawyers, students, management and staff have created a unique firm culture which nurtures mentoring and the exchange of ideas. Osler is a dynamic and exciting place to begin a career or carve out a new path. We care about our staff and the working environment here proves it.

We are currently recruiting for a Trademark Database Administrator to provide support to legal assistants and legal professionals in the Intellectual Property department. This full-time position is open to candidates with an avid interest in Trademark prosecution, including the administrative and clerical steps and processes required to bring a trademark to registration. Experience working in Intellectual Property, specifically trademarks, are an asset.

Major Responsibilities

• Opening of new Trademark and Opposition matters in our database (Inprotech)
• Entering filing information, deadlines, reminders and all critical and non-critical dates for tracking
• Daily management of the task deadlines in the database, including reconciling the deadlines as needed
• Generating deadline or portfolio reports from data in our file management system as requested
• Tracking and reconciling fee payments with the central Finance Department
• Reviewing and triaging incoming correspondence received from the Canadian Intellectual Property Office for accuracy, which includes acknowledgements of filings, approval notices for advertisement, advertisements, registration certifications, applications to extend, etc.
• Provide back up support to the IP team, using the CIPO trademark online filing system
• Reviewing and processing Foreign trademark correspondence as received from Foreign Associates
• Responsible for maintaining the information contained in our database, including updating of client information, contacts, reference numbers, ownership
• Reviews weekly Trademark Office Journal for trademark advertisements relevant to the Trademark department’s clients
• Reporting of routine correspondence to clients using standard templates
• Ensures electronic files are closed on a regular basis
• Implements renewal procedures for trademarks which involves ensuring mailing addresses are correct, and maintaining renewal records in the departmental database
• Provides workflow and deadline tracking support to legal professionals and legal assistants
• Handles confidential materials and documents
• Performs other duties as required

Position Requirements

Education and Experience

This position requires a college diploma as well as a minimum of 3 years’ experience working in the Intellectual Property Industry. An equivalent combination of education, training and experience is acceptable.

Knowledge and Skills

• Strong knowledge of Microsoft Office and computer applications
• Ability to learn new systems and adjust to changes in workflow
• Knowledge of legal procedures, statutes, and regulations relating to Trademark practices (including Madrid Protocol, Opposition and Section (45) proceedings)
• Ability to work quickly, accurately, independently, and takes initiative
• Ability to remain calm when dealing with daily deadlines and situations requiring tact and flexibility
• Organizational skills required to handle a large volume of materials and expedite flow of work
• Strong verbal communication and interpersonal skills to deal with a variety of internal and external stakeholders

We are currently working in a hybrid work arrangement, which includes a requirement to work primarily in the office and flexibility to work remotely up to 2 days per week.

Accessibility and Accommodation

We thank all applicants for their interest in Osler; however, only chosen applicants will be contacted. Osler is committed to fostering a diverse and inclusive work environment, and we welcome and encourage applications from people with disabilities and people with diverse backgrounds, identities, and cultures. Accommodations are available upon request for candidates in all phases of the selection process.

Background and Reference Checks

Please note that any offer of employment will be conditional upon background and reference checks, including a criminal record check, credit check, and employment and educational verifications.

If you have the required background with the ability to provide exceptional customer service and wish to work in one of Canada's leading law firms, please reply in confidence with a cover letter and résumé by the closing date.