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General Counsel Consulting

General Counsel
Consulting
provided
exceptional
service in helping
my organization
recruit for a hard
to fill position.
They did extensive
work on the front
end to understand
our needs and
our culture and
began referring
highly qualified
candidates almost
immediately.

Melinda Burrows
Deputy General Counsel
- Litigation and
Compliance, Progress
Energy Service Company
LLC

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Counsel Jobs > Senior Director, Corporate Trademark Counsel Job in Wisconsin > Senior Director, Corporate Trademark Counsel

In House Legal Job Listings

YOUR WINDOW TO A WORLD OF OPPORTUNITIES

Senior Director, Corporate Trademark Counsel

Refer job# WYCD142271

Senior Director, Corporate Trademark Counsel The candidate will support the business on all aspects of trademark, copyright, licensing and domain name issues, including matters related to licensed brand properties and third party content. The Corporate Trademark Counsel will be responsible for company global portfolio of brands, and will handle all trademark clearance, filing, prosecution, maintenance, and enforcement legal work related to the portfolio. Further, the Senior Director, Corporate Trademark Counsel will work closely on all IP licensing matters. The Corporate Trademark Counsel will partner with business stakeholders both domestically and globally to manage risk related to trademark and copyright matters. Conduct research on trademark availability and render legal opinions to the business related to trademark use, adoption and registration. Manage the company trademark portfolio: prepare and file U.S. applications, responses and related documents; collaborate with global in-house and outside attorneys with respect to foreign filings; oversee the prosecution docket and case files. Review print and digital marketing, advertising, packaging and other commercial materials from internal clients and external partners for compliance with brand guidelines and other legal requirements. Assure compliance with corporate guidelines and monitor use of company brand assets (including trademarks and domain names) by external partners and third parties, and engage in or manage (as appropriate) trademark enforcement efforts, including publications in the Official Gazette, trademark watch programs, oppositions, cancellations, cease and desist letters, domain name disputes, investigations, and litigation. Advise and counsel on the use of third party content and copyright. Oversee and direct agreements related to trademark and copyright, including assignments, licenses and consents. Lead the efforts to draft, negotiate and manage all trademark license agreements, including coaching other attorneys and legal professionals. Manage due diligence related to trademarks. Provide leadership, guidance and training to company employees and colleagues with respect to trademark, trade dress, design patent, copyright and domain name issues. The candidate should have Juris Doctor degree from an ABA accredited law school, licensed to practice and in good standing in one or more states, and eligible for admission to practice in the State of Wisconsin. Excellent knowledge of trademark and copyright law on a global basis is needed. Must have 10 years of experience with a law firm or corporate legal department (some corporate experience preferred). Must be experienced at U.S. and foreign trademark prosecution, trademark clearance and risk assessment, and proper use analysis. Should have experience with brand enforcement, including trademark litigation, TTAB proceedings, foreign opposition and cancellation proceedings, UDRP s, URS proceedings, demand letters, and take-down processes. Experience with IP licensing, assignments and general commercial contracts is required. Prior experience in the CPG industry highly desirable.

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