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Vice President & Senior Counsel - Global Intellectual Property
Refer job# ZMPB167445
 
Vice President & Senior Counsel - Global Intellectual Property The candidate will be providing legal advice to clients and responding to requests, on a timely basis, from clients for input on Intellectual Property matters such as licenses and other agreements. Reviewing agreements and recommending revisions to relevant IP-related provisions. Providing guidance and advice related to the investigation of possible infringements and handling cease and desist or inquiry letters when appropriate. Providing oversight of trademark search requests from clients by paralegals to include consultation regarding availability of mark(s) for use and/or registration and drafting/review of opinion memos to clients regarding availability of mark(s) for use and/or registration. Providing oversight of U.S. and international trademark prosecution, maintenance and enforcement, including maintenance of files, preparation and filing of applications, Office Action responses, ITU-related documents (e.g., Statement of Use or similar affirmation documents), Post Registration documents (e.g., Sections 8, 9, and/or 15 Affidavits or other renewal documents), Opposition and Cancellations, and related formality documents (e.g., POAs). Responding to correspondence from foreign counsel by gathering and providing foreign counsel with information/ documentation necessary to prosecute/maintain/enforce trademark applications and registrations and respond to Office Actions and other challenges. Handling trademark registration conflicts and Intellectual Property disputes, including evaluating correspondence from the US and foreign counsel and providing guidance related to responses relevant to the dispute, and partnering with the Dispute Resolution Practice area as needed. Providing advice on proposed transactions with respect to IP rights and risks, confidentiality agreements, structuring the transaction, letters of intent, and trade area restrictions. Training business clients and law department colleagues on trademark rights, infringement risks and compliance with policies regarding intellectual property. Understanding and resolving local law issues with respect to IP rights and risks. Assisting in department or division-wide initiatives and special projects.

The candidate should have an excellent academic record with a law degree from a top law school. Should have 10+ years of applicable legal experience in trademark/copyright law in a law firm or corporate law department. Active US State Bar membership. Proven contract drafting and negotiating skills. Ability to expeditiously identify and analyze issues and provide legally sound recommendations consistent with good business practices and reason. Ability to work under stressful conditions with owners, lenders, and partners of properties in financial distress. Strong interpersonal skills, and ability to interact effectively and work diplomatically with individuals at all levels. Ability to foster relationships and individual accountability across the organization. Excellent written and oral communication skills. Excellent conflict management skills, and ability to influence without coercion. Ability to identify opportunities for improvement and facilitate the implementation of creative solutions. Ability to work independently, take ownership of and effectively resolve problems. Ability to expeditiously identify and assess issues and provide legally sound recommendations consistent with good business practices and reason.
 
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