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Senior Intellectual Property Counsel role for international luxury goods retailer, managing trademark disputes and litigations, supporting trademark clearances and prosecution, and managing the Legal Anti-Diversion team.
Job Responsibility:
Managing U.S. Intellectual Property disputes
Draft and review cease and desist letters and correspondence relating to IP infringements
Prepare opposition notices and cancellation petitions for USPTO
Negotiate, draft and revise settlement agreements
Manage international TM disputes
Partner with US Head of Intellectual Property and global team to create universal strategy
Manage relationships and case expectations with outside counsel
Create and implement IP strategies and objectives that align with global and regional priorities
Prosecute Trademark applications including assisting in trademark clearance searches
Advise Trademark Manager on responses to USPTO office actions and renewals
Advise key stakeholders on copyright, patent, domain name and trade secret
Partner with US Legal corporate team to prepare, draft and negotiate commercial contracts
Manage senior paralegal including creating priorities and responsibilities
Develop, define and implement strategies to achieve program objectives
Plan, organize and direct operations of anti-diversion program
Align program objectives with company's long-term vision
Set and review KPIs to meet program objectives
Develop and implement strategies to maximize commercial and legal actions
Partner with internal and external stakeholders to enforce policies and mitigate diversion
Partner with Global Anti-Diversion in worldwide execution of program
Develop and issue US reporting to Leadership and Senior Management
Develop and implement educational resources to increase program knowledge
Manage program budget to maximize cost effectiveness
Manage Legal Anti-Diversion team
Requirements:
JD from an accredited Law school
Minimum 7 years of experience in trademark area handling trademark prosecution matters
Experience with clearance searches
Experience with proceedings in the USPTO and abroad
Experience with US litigations
Law firm experience preferred
Deep understanding of intellectual property law primarily focusing on trademarks
Some copyright and patent knowledge
Strong organizational skills and attention to details
Clear and concise communications skills
Excellent interpersonal skills and creative thinking
Tech-savvy including proficiency with cloud-based document and database systems
Ability to work proactively, independently and reliably on multiple projects under tight time frames in a fast-paced environment
Nice to have:
Anti-diversion experience
Working in highly collaborative environment
Building relationships with stakeholders at all levels
Representing company on trade association task forces and committees
Collaborating with global counterparts on trademark matters
Leading and developing a team
Delivering deadlines and accountabilities
Continuously improving processes
Succeeding in dynamic, results oriented environment
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