Director, Senior Trademark Counsel

Practice Areas: Trademark, Intellectual Property, Trademark Prosecution, Trademark Litigation Exp.: 10+ Years
Description:
Job Description:
An American Computer Hard Disk Drive Manufacturer and Data Storage Company is an industry-leading provider of storage technologies and solutions that enable people to create, leverage, experience and preserve data. An American Computer Hard Disk Drive Manufacturer and Data Storage Company’s trademarks, logos and slogans are valuable assets that distinguish our products from those of our competitors. An American Computer Hard Disk Drive Manufacturer and Data Storage Company’s global Trademark & Brand Protection team focuses on protecting and managing its trademark portfolio and enforcing against unauthorized or improper use of those assets.

This role will be responsible for the Company’s strategic development of its worldwide trademark portfolio, oversee trademark licensing and transactional work, and provide support for the Company’s brand enforcement program. The position reports to the Company’s Director responsible for non-APAC Brand Enforcement and Trademark Prosecution.

Responsibilities include working with business teams and outside counsel to create and implement a strategic framework for developing, maintaining and controlling use of the Company’s trademark portfolio. Additionally, this attorney is expected to know and learn developments in trademark prosecution rules/laws and advise on strategic trademark and brand initiatives globally. This position will also be responsible for continuing the Company’s reputation as a leader in trademark portfolio development.

Essential Duties and Responsibilites

  • Develop and manage the Company’s strategy for global trademark preparation, filing and prosecution of trademark applications.
    • Counsel and collaborate with internal clients on strong trademark/product name selection, including attendance at key marketing, product development and kickoff meetings.
    • Advise internal clients on trademark clearance results, risks of adoption for proposed new marks, and measures to mitigate risk.
    • Register new marks (classes, description of goods/services) using clear criteria for registration of marks.
    • Respond to office actions issued by global Trademark Examiners to allow the Company to obtain trademark registrations for pending marks. Requires coordination with APAC Trademark/Brand Enforcement attorney to ensure consistent arguments.
    • Ensure the Company has the right to use its trademarks by maintaining and understanding data/information on countries where the Company’s products are distributed, sold and serviced.
    • Protect the Company’s right to enforce its brand and trademarks by maintaining data/information on countries where the Company faces counterfeit or infringement risks.
  • Oversee procedures for gathering evidence of use of WD trademarks worldwide to maintain validity of WD trademarks.
  • Maintain understanding and knowledge of WD products and services.
  • Manage outside counsel on worldwide trademark oppositions and cancellations to protect enforcement rights/ avoid brand dilution.
  • Promote awareness of the Company’s trademark portfolio and usage guidelines by training employees and authorized third parties (e.g., marketing firms, social media firms, promoters).
  • Collaborate with global brand protection leads to establish a strategy and evidence for expanding well-known status of WD trademarks and collaborate with APAC Brand Enforcement/Trademark Counsel to ensure consistency in strategy for APAC and rest of world.
  • Maintain trademark usage guidelines for customers (e.g., distributors, retailers) to protect the Company’s trademark rights and to help avoid brand dilution.
  • Oversee trademark internal quality control process.
  • Develop process for brand authorization letters for customers, partners, regulatory officials and online as may be needed.
  • Manage and control licensing of WD trademarks globally, including advising on trademark license provisions in the context of agreements with different partners and customers.
  • Support trademark review of all forms of marketing, advertising, press releases, and packaging materials compliance with the Company’s trademark usage guidelines.
  • Handle trademark diligence with respect to corporate transactions.
  • Collaborate with internal copyright experts to determine strategy for obtaining copyright protection for the Company’s logos.
  • Manage a team of trademark paralegals and a junior trademark attorney.

Qualifications:
  • J.D. degree from accredited law school; top 50 law school strongly preferred.
  • Current member of a state bar in good standing.
  • 10+ years post bar experience in trademark and intellectual property law, including experience in trademark prosecution/counseling/strategy, with 6 years of experience at a top tier law firm and 4 years of experience in-house. Some trademark litigation experience desired.
  • Demonstrated experience as a proactive and strategic trademark and brand partner to internal business teams.
  • Ability to communicate legal advice and risk mitigation strategies in clear and understandable terms to internal clients that demonstrates an understanding of the business and business processes.
  • Knowledge and ability to identify, handle and advise on complex issues in many disciplines, with particular expertise in trademark law and intellectual property.
  • Strong interest in understanding and working with technology products.
  • Strong understanding of trademark laws of foreign jurisdictions.
  • Ability to work in a fast-paced environment, effectively handle shifting priorities and manage and prioritize multiple projects.
  • Has a customer service focus and works collaboratively with internal partners and has an ability to work effectively with colleagues around the world.
  • Excellent communication and interpersonal skills with the ability to communicate effectively at all levels of the company.
  • Demonstrated attention to detail, problem-solving ability, strong organizational and time and project management skills.
  • Attentively listens to others and encourages the open expression of diverse ideas and opinions.
  • Provides timely and helpful information to others across the company.
  • Owns and manages various projects and new opportunities with enthusiasm and is comfortable with multi-tasking.
  • Effective at conflict resolution skills to manage difficult situations effectively.
  • Demonstrated experience managing and developing a high-performance and collaborative team.
  • Instills trust and develops/maintains good working relationships with colleagues, internal partners and/or external contacts and counsel.
  • Drives results while independently performing tasks and making recommendations regarding appropriate courses of action to functional leaders and client groups.
  • Committed to growth mindset and continuous improvement.
  • Strong sense of ownership and accountability in managing functional objectives and internal and external stakeholders.
  • Domestic and International travel may be required when it is safe to do so.

Apply Now




Upload Your Resume
Upload your resume on Attorney Jobs in USA to allow featured employers to find you.

Upload Your Resume

Post A Job Now
If you are an employer, we encourage you to post your job vacancy on our site.

Post A Featured Job

 

Hey Folks, Any Question or Suggestion?

You can find someone friendly immediately on (315) 316-1215 ( EST 9:00 to 14:00 ) or write us about your concern or suggestion at mrudang@attorneyjobsinusa.com and we will get back to you as soon as possible.

Call: (315) 316-1215