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Counsel, Intellectual Property
Refer job# MPTS169418
 
Counsel, Intellectual Property RESPONSIBILITIES: Responsible for helping manage day-to-day activities of Mary Kay's global trademark portfolio, including domestic and international clearance, filing, prosecution, maintenance, enforcement and defense. Helps coordinate and manage an extensive international network of foreign IP counsel and other professional service providers to ensure that proper action is taken in international markets to obtain, maintain, protect and enforce Company trademarks, service marks, patents and other IP assets. Assists in coordinating and directing the efforts of IP paralegals and staff in carrying out various IP responsibilities including patent and trademark clearance, prosecution and enforcement, licensing, copyright prosecution, internet enforcement, IP reporting, docketing, among other responsibilities. Responsible for investigating, preparing and handling internet and domain name enforcement matters such as UDRP and other administrative enforcement filings to protect the Mary Kay brand and associated IP. Assists with all aspects of TTAB actions and litigation involving IP matters, including claim analysis, preparation of and response to pleadings and discovery. Supports the Company by providing advice, analysis and recommendations on a wide variety of IP matters, as well as contract drafting, negotiation and review of matters involving IP, both domestically and internationally. Advises and educates employees regarding IP Policy compliance and assists in Company IP Policy compliance efforts. Assists with management of the global patent portfolio, including responsibility for prosecuting global design patents. Responsible for IP audits and preparing related reports, analysis and recommendations. Evaluate and prepare reports, analysis and recommendations regarding various IP activities and strategies. Keeps abreast of new IP litigation, legislation, regulations and laws that might impact the business operations of the Company and its interests in the US and abroad and works to interpret and assist business units in complying with and/or understanding the potential impact to the business. Assists with efforts to review and monitor the use of trademarks, service marks, patent markings and copyrighted materials by the Company on its products, creative materials, and advertising. Works directly with key internal IP business clients and their teams, such as Research and Development, Marketing, Brand Communications, and Purchasing regarding the development, protection and the proper use of trademarks and service marks, copyrighted materials, trade secrets and patents. Assists IP team efforts to provide advice and counsel to internal departments and Company subsidiaries regarding the development of new trademarks and service marks and copyrighted materials, searching, clearance and developing of new product formulas and ideas. Negotiates joint development and collaborative business agreements with third-party developers for the development and patenting of new technologies - negotiates, drafts and manages complex joint development, collaborative and related confidential disclosure agreements. Assists in the processing of invention disclosures, patentability and clearance searches, freedom to operate, non-infringement and invalidity opinions, and defensive filing strategies. Responsible for worldwide book publishing and licensing activities of Mary Kay Ash books and other Company publications. Provides subject matter expertise and guidance to the various Legal Resources attorneys regarding the handling of transactions, disputes and other legal matters involving intellectual property and including assistance with product claims. Provides expertise and guidance for areas such as Marketing, Packaging and for Company publications. Oversees management of legal aspects of global photographic image use policy; drafts domestic and international photography production and related agreements; handles global enforcement of photography rights. Assists with or assumes responsibility for other legal projects as assigned.

QUALIFICATIONS: Bachelor ?s degree and law degrees (LLM or JD) plus. Must be a member in good standing of at least one State Bar. Should have 2-6 years of IP/Trademark attorney experience with emphasis on trademarks and copyright prosecution experience; patent experience is a plus. Should preferably have experience managing domestic and international trademark portfolios, including clearance, counseling, prosecution, conflicts, and enforcement matters, as well as domain name and internet enforcement, social media and online brand enforcement, anti-counterfeiting, and design prosecution. Significant experience independently managing an international trademark portfolio and direct communications with non-attorney clients is a plus, as well as providing IP training to non-attorneys. Some experience in the cosmetic and/or consumer products industries is preferred. Excellent organizational, interpersonal, analytical, and communication skills, strong work ethic, attention to detail, sound judgment, and discretion, including a strong ability to determine the appropriate allocation of limited resources among competing priorities. Must have a strong ability to think strategically, effectively assess risk and global impact, and problem solve. Strong ability to work independently and as an integral member of a legal or cross-functional team, including support of the Company ?s and Legal team ?s strategic initiatives. Ability to direct and manage activities of and relationships with IP team members and outside counsel.
 
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