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Trademark Enforcement Counsel

Experience
10 yrs required

Location
San Jose, CA, United States

Posted on
Sep 27, 2020

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Trademark Enforcement Counsel
The candidate will report to IP Litigation Lead Counsel. Will be primarily responsible for worldwide trademark auditing, monitoring, and enforcement and managing contested trademark invalidation proceedings. Manage global trademark monitoring and enforcement, including collaboration with IP litigation team when necessary. Establish global programs to identify, monitor and prevent trademark misuse, infringement and counterfeiting. Manage rigorous global enforcement of trademark rights, including cease & desist communications, customs and border office protection, domain name disputes (e.g., UDRP), and prosecution and defense of opposition, cancellation and invalidation proceedings. Lead strategy on worldwide trademark procurement, registration and portfolio management, including driving training program for business partners and establishing coordinated global strategy. Assess and maximize trademark and brand value in cooperation with corporate and business brand strategy teams. Provide pragmatic and actionable counsel on risk analysis and mitigation strategies for trademarks, trade dress, product designs, and domain names. Counsel business stakeholders on trademark value, rights and protection strategies as well as deals and agreements implicating trademark rights. Drive continuous improvement in existing trademark practices, including procurement, policy and training. Work closely with team of trademark specialists to manage and optimize value from trademark budget. Manage work performed by outside service providers, including outside counsel.

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