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ProfileIP Counsel The candidate will be a key member of a team delivering all aspects of world class intellectual property legal services. Establish proactive counseling relationships with marketing, innovation, tax, strategy and other corporate personnel. In doing so, take ownership of business outcomes driving a flexible, commercially minded approach – inspire confidence and engagement in the business through excellent business partnering. Manage global IP portfolio in a responsible manner to ensure commercially informed and cost-effective protection. Provide legal counsel on global innovation and marketing initiatives, including clearance searching, rendering availability opinions, initiating and overseeing filing programs, and advice on false advertising risks, right of publicity issues, and other intellectual property related issues. Initiate and manage aggressive/cost effective enforcement programs to challenge third-party activities that adversely affect the brands, including oppositions, cancellations and intellectual property related litigations. Effectively manage outside counsel and wider budget in a cost-efficient manner. Negotiate and draft trademark and marketing-related transactional documents, such as license agreements, settlement agreements, advertising agency agreements, sponsorship and celebrity talent agreements. Help mentor and support a team of trademark specialists/assistants driving engagement and enabling team members to broaden their impact in their roles. Handle IP work in relation to acquisitions, divestitures and joint ventures, as appropriate or necessary. Exercise sound judgment and effective and efficient time management. JD, Bar membership, and 3+ years experience in intellectual property and advertising law with significant business contact and responsibility required. Proven capability of dealing with sophisticated IP issues, challenges and litigation required. Excellence in provision of legal advice, ensuring that complex legal issues and risks are appropriately communicated and mitigated; proven ability to work in the commercial environment, to identify business critical issues and prioritize workload to align with business needs required. Excellent analytical, drafting and negotiating skills, good commercial and pragmatic approach- applies knowledge of the law and understanding of the business, with proven ability to generate respect from both the business and colleagues for judgment, approach and commitment required. Proven track record of managing complex legal transactions and dealing effectively with external legal service partners in multiple jurisdictions, including close management of trademark opposition, cancellation, and other conflict matters and experience in handling enforcement matters such as coordination of investigations, cease & desist letters and other pre-litigation enforcement measures; experience in managing all aspects of trademark and other IP litigation required. Strong: experience in U.S. and international trademark portfolio management, including clearance searching, rendering availability opinions, and related business counseling and education; prosecution of U.S. and foreign trademark applications; experience in providing legal advice around false advertising, right of publicity and FTC compliance issues required. Experience drafting trademark and marketing-related transactional documents, such as license agreements, settlement agreements, advertising agency agreements, sponsorship and celebrity talent agreements required. Knowledge of copyright, patent and trade secret protection and other IP areas preferred.
Job ID: 56890BR