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Lead Counsel - Intellectual Property, Brand And Trademark
Refer job# TKOH142411
 
Lead Counsel - Intellectual Property, Brand and Trademark The candidate will be responsible for management and coordination ofglobal trademark portfolio, counseling clients on trademark and branding matters, and drafting and reviewing IP-related agreements. Collaborate with and counsel business clients, colleagues and outside counsel in development of intellectual property protection strategies. Domestic and international searching, prosecution, enforcement and counseling companys trademark portfolio. Manage a significant global trademark filing program. Conduct due diligence and support trademark aspects of mergers and acquisitions activities; advise on trademark provisions in M&A agreements and advise teams on brand issues and compliance during business integration. Prepare cease and desist letters, draft UDRP complaints for domain name matters, prepare filings for the US Trademark Trial & Appeal Board (Petitions to Cancel and Oppose; Extensions of Time). Work with other members of the Global Law & Policy Team to manage worldwide conflicts and infringements, including administrative and judicial opposition and cancellation proceedings. Draft and negotiate IP-related agreements as well as IP specific terms in other agreements. Work closely with other lawyers in addressing mixed intellectual property/general legal issues. Assist in department process and systems improvement. Provide leadership and legal advice as a member of multi-functional teams. Use a range of tools and data sources to understand the internal and external IP environment. Collaborate with regional legal colleagues and subject matters experts to advise the business on complex IP/legal issues that arise out of companys global operations. Develop training and train client groups and other team members.

The candidate should have JD (or global equivalent) and member of good standing of the Bar of any state. Must have 3 years of legal experience with relevant trademark expertise. Should have excellent written and oral communication skills. Must be capable of devising innovative IP strategies. Prior experience working in healthcare or life sciences industry is preferred. Knowledge of laws, regulations, practices and procedures relating to trademark, branding, advertising, copyright and/or IP licensing in US, Europe and Asia is desired. Experience prioritizing competing demands to make real time decisions/recommendations in a fast-paced environment is preferred. Demonstrated ability to quickly identify & prioritize issues, develop process-driven solutions, and effectively communicate with a wide range of people is desired. Previous experience related to handling IP-related issues related to open source software, software development, and technology transactions is desired.
 
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