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In-House
Attorney
Intellectual Property
Litigation - Whistleblower - CFTC
3-8 yrs required
Legal Counsel, Trademarks & Copyright Duties: A lead attorney responsible for global management of certain brands of the overall trademark portfolio. Participate in all aspects of global brand protection strategy, including trademark prosecution, infringement and litigation, social media usage, anti-counterfeiting enforcement and Customs recordation. Advise and assist North America based and global clients in developing and executing strategies involving trademarks and copyrights to achieve desired business results. Supervise in-house preparation and filing of documents relating to the prosecution and maintenance of trademarks in the U.S. and Canada, including applications, statements of use, post registration filings, and renewals. Prepare and file notices of appeal, office action responses, oppositions and assignments in the U.S. Supervise foreign outside counsel in connection with strategy and management of all aspects of trademark prosecution, proceedings and litigations, draft and/or supervise preparation of documents relating to opposition and cancellation proceedings, UDRP proceedings, including complaints, notices of opposition, petitions to cancel, discovery requests and responses, document production, briefs, etc. Negotiate, draft and/or supervise negotiation and preparation of settlement agreements and license agreements relating to litigation, oppositions, UDRP proceedings, or other conflict actions. Interact with relevant Trademark, Copyright, Customs and other official offices globally, as needed. Review social media assets prior to posting and participate in social media real time events. Conduct preliminary and full trademark clearance searches and render opinions regarding availability. Create guidelines manuals and provide associated training to clients on the development and proper use of trademark assets. Review watch service reports and trademark office publications to determine whether action should be taken against third-party applications/registrations. Draft cease and desist letters and other correspondence relating to infringement of trademarks and copyrights and handle resolution of these matters. Draft and negotiate trademark licensing agreements. Participate in global trademark team activities with Corporation’s in-house colleagues in Latin America (LAR), Europe, Middle East and Africa (EMEA) and Asia Pacific. Supervise and participate in trademark/copyright training for business teams and new employees throughout the company. Provide advice and direction to paralegals responsible for the review of social media postings, advertising, marketing, quality control, design, and sponsorship submissions. Participate in special activities and projects with Whirlpool Corporation and the law department.
Qualification and Experience
Qualifications: A Law Degree from an accredited law school. Admission to a state Bar (with ability to gain admission to the Michigan Bar). 3-8 years of relevant experience: U.S. and foreign trademark practice, including clearance searches, reviews, prosecution, maintenance, oppositions, cancellations and litigation. Experience in trademark licensing and advising on social media and copyright issues. Strong ability to work effectively in a team environment and the ability to instill confidence in clients and peers. A sense of humor and a passion for brands (mandatory).
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