Counsel Intellectual Property Asia Pacific APAC

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Counsel, Intellectual Property, Asia Pacific (APAC)
The candidate will be responsible for: Manage Mattel’s IP (non-patent) portfolio, litigation, brand enforcement, anti-counterfeiting, and provide IP related advice to Mattel’s business in Shanghai and the Asia Pac region. Manage IP brand enforcement efforts across all significant online marketplaces in Asia-Pac. Manage legal aspects of anticounterfeiting raids, including prosecutions of and civil actions against counterfeiters. Evaluate IP infringements and take appropriate action, including by sending C&D letters and filing/managing civil actions against infringers. Manage administrative enforcement cases, litigations, negotiating undertakings and settlements to bring maximum IP protection deterrence to the counterfeiter and infringers in online and offline market places. Work with Customs in Asia Pac to prevent the export and import of counterfeit and infringing products. Manage outside counsel and IP agencies to achieve IP protection goals. Establish and maintain excellent working relationships with the governmental and non-governmental organizations, trade associations and brand owners, and particularly the Quality Brand Protection Committee, to support brand protection initiatives. Maintain relationships with ecommerce platforms to achieve better compliance with online takedown requests, proactive monitoring, and cooperation with online to offline enforcement actions against counterfeiters. Work with Asia Pacific Business management teams to tailor IP filing and protection strategies in support of business operations and growth. Provide trademark clearance advice. Manage the filing of trademark, copyright and design applications. Manage trademark oppositions, invalidations, and non-use cancellations. Provide daily legal advice in connection with all IP related issues. Assist in the preparation, negotiation and execution of commercial projects for Mattel where IP is part of the consideration and key elements. Promote awareness of Mattel Intellectual Property by training key business partners, and externally to key customer/licensees and ecommerce platforms. Assist in review of Mattel packaging and labeling, standards and practices, and audio/visual content. Willingness to assist with matters outside core practice area as urgencies arise. Law degree required. Should have 5+ years of experience as a practicing intellectual property lawyer managing both IP litigation and prosecution. 3+ years of in-house experience preferred. Should have substantive knowledge of trademark, copyright and design law, including anticounterfeiting and trademark prosecution. Must have excellent written and verbal communication skills. Must be comfortable with technology and skilled with MS Office, including Outlook, Word, Excel, and PowerPoint.

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