Careers in trademarks

Careers in Trademarks

Trademark Agent

In Canada, trademark agents are registered before the Canadian Intellectual Property Office (CIPO).Trademark agents may or may not be lawyers. If an agent is a lawyer, two years of training under the guidance of a registered trademark agent must be completed before becoming a registered agent (note that CIPO has proposed a change to this rule). If an agent is not a lawyer, in addition to the two year period under supervision of a registered trademark agent, the candidate must pass an examination that tests knowledge and understanding of trademark law and principles.

Trademark agents prepare and file trademark applications, handle objections from the Canadian Trademark Office or others about the registration of international marks, appear before theTrademark Opposition Board and advise on proper protection of trademarks in Canada and abroad.They know where to look and what to assess to determine whether a trademark will land its owner in hot water, and they can guide the client through the twists and turns of the registration process.

A trademark agent may work in IP firms or law firms of all sizes, may be a sole practitioner or work in a corporation.

For information on how to become a Trademark agent, click here.

Lawyer

A lawyer who practices in trademark law may do some or all of the following:

  • Prepare legal documents and legal opinions
  • Negotiate settlements of trademark disputes
  • Perform administrative and management functions related to the practice of trademark law
  • Advise clients on intellectual property issues
  • Manage prosecution of trademark applications if registered as a trademark agent (see above)
  • Advise on the registrability of trademarks, trademark licensing requirements, transfer of intellectual property and protection of existing trademark rights
  • Plead clients' cases before courts of law
  • Consult with foreign associates and attorneys on international trademark matters
A trademark lawyer may work in IP firms or law firms of all sizes, may be a sole practitioner or work for corporations, government or universities.

Trademark Paralegal

A trademark paralegal works in IP firms or law firms of all sizes, or in a corporation.

  • Assist trademark agents and lawyers by preparing prosecution and other documents
  • Conduct and order trademark searches
  • Compile, verify, record and process prosecution documents, licenses, assignments and opposition documents using docketing and information systems
  • Draft correspondence and perform general office and clerical duties.

Trademark Docket Clerk

A trademark docket clerk works in IP firms or law firms of all sizes, or in a corporation.

  • Compile, verify, record and process prosecution documents, licenses, assignments and opposition documents using docketing and information systems
  • Organize and co-ordinate flow of work

Trademark Assistant

A trademark assistant works in IP firms or law firms of all sizes, or in a corporation.

  • Assist trademark lawyer or agent in preparation of correspondence and legal documents relating to intellectual property
  • Schedule appointments, meetings and conferences for employer
  • Set up and maintain filing systems to manage trademark portfolio
  • Determine and establish office procedures and routines
  • Prepare letters reporting application milestones
  • Other general office work

Trademarks Examiner – Canadian Intellectual Property Office

  • Read and analyze trademark applications
  • Determine if the trademark applications comply with the Trademarks Act and Trademark Rules.
  • Communicate with the applicant or the applicant's trademark agent if their application does not comply with the Trademarks Act and Trademarks Rules.
  • Consider responses from the applicant or the applicant's patent agent.
  • Recommend the grant or refusal of a trademark registration.