In-house Attorney Intellectual Property

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In-House Attorney, Intellectual Property
The candidate will manage the company’s global trademark portfolio, including conducting trademark searches, providing trademark evaluations and recommendations, and managing the trademark registration process. Work directly with and supervise outside counsel/attorneys to align intellectual property activities worldwide to support business objectives and ongoing patent/trademark litigation. Supervise and lead all activities surrounding the IP of Fender and all its subsidiaries, while working directly with the internal legal team, multiple business units and product teams, as well as external collaborators, to provide IP advice, strategy and recommendations. Directly manage the global IP portfolio, including trademarks and patents, to ensure timely renewals, cancellations, etc. Research and make well-informed decisions on IP registrations, domain procurement, cease-and-desist correspondence, and co-existence agreements relative to the new product development and implementation processes. Review and advise on trademark placement on product packaging and marketing creative for compliance with promotion laws, company standards and industry standards. Conduct patent and trademark searches including patent landscape, technology area and competitor IP searches and provide evaluations and recommendations. Prepare patent family reviews, maintain patent registrations and process patent annuities. Partner with Fender’s Licensing Department to review and draft license agreements. Effectively maintain the global IP budget and provide periodic reports on IP spend. Routinely train business units on trademark usage and any other IP-related topics, and maintain and keep current the relevant sections on company’s intranet site. Provide assistance with special projects and other duties as assigned. Managing pre-litigation brand enforcement activity including cease and desist letters, notice and takedown requests, commercial correspondence, and negotiating settlements. Managing criminal and civil pre-litigation activities, including overseeing investigations including advising on strategy, drafting documents, interviewing internal witnesses and experts, compiling and presenting data, and authenticating products as part of pre-litigation and litigation enforcement activities. Conducting factual research of infringing activity, including orchestrating test buys, identifying illicit behavior, identifying counterfeit products, and performing or coordinating further product testing and analysis. Collecting and preserving evidence of wrongdoing to maintain availability of all enforcement options. Partnering with internal and external teams to identify new targets and fraudulent activities globally. Collaborating with external partners such as customs, state and federal law enforcement agencies. Identifying and prioritizing jurisdictions for new enforcement options and implementing the same. Manage outside counsel and use internal and external digital tools to effectively manage cases, report results, and measure return on brand protection and enforcement activity.

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