Description:
Job Summary:We are seeking an experienced and dynamic Lead Counsel for Trademark and Copyright to join our Legal team at the Senior Director level. This role serves as a trusted legal advisor to senior business leaders and plays a critical part in protecting and advancing the Company's valuable trademarks and copyrights. The ideal candidate brings deep expertise in global trademark law, a collaborative mindset, and a proven ability to drive process improvement and innovation in a fast-paced, Fortune 50-level corporate environment.
Key Duties & Responsibilities:
The Lead Counsel will manage a broad and dynamic portfolio spanning trademark, domain name, copyright, and marketing/advertising law. Specific areas of responsibility include:
Trademark Portfolio Management:
Marketing & Advertising Compliance
Strategic Advisory & Innovation:
Preferred Qualifications:
- Lead global trademark strategy and serve as primary subject matter expert for all trademark matters across the enterprise.
- Search, clear, apply for, register, renew, and maintain a portfolio of approximately 2,500 marks on a worldwide basis.
- Monitor the trademark landscape through watch services; send and respond to cease and desist letters; file oppositions and inter partes proceedings; and initiate and manage litigation to protect the Company's brands globally.
- Manage a global network of outside trademark counsel, including annual budgeting, matter oversight, and performance management.
- Lead and develop a small internal team of employees and contractors supporting the trademark function.
- Conduct trademark due diligence in connection with mergers, acquisitions, and other strategic transactions.
- Domain Name Portfolio Management:
- File, register, and renew more than 1,000 domain names on a worldwide basis.
- Pursue enforcement actions including UDRPs and other dispute resolution proceedings as needed to protect the Company's online brand presence.
- Copyright:
- Oversee the filing, registration, and enforcement of copyrights on a worldwide basis.
- Advise internal stakeholders on copyright ownership, fair use, licensing, and infringement issues.
- Review advertising and promotional materials for compliance with truth-in-advertising standards, COPPA, alcohol and tobacco regulations, and applicable third-party agreements.
- Review and advise on sweepstakes and contest rules, giveaways, BOGOs, etc.
- Review agency agreements, NIL agreements, and other promotional agreements.
- Draft and negotiate trademark license agreements — both inbound and outbound — on a worldwide basis.
- Serve as a trusted legal advisor to senior business leaders, providing timely, practical, and business-oriented counsel on intellectual property matters.
- Drive process improvement and innovation within the Legal function, identifying opportunities to leverage technology, outside resources, and best practices to improve efficiency and value.
- Partner cross-functionally with Marketing, Finance, and other departments to align IP strategy with business objectives.
Preferred Qualifications:
- Juris Doctorate
- 8 Years of Experience
- Demonstrated expertise in global trademark prosecution, portfolio management, and enforcement.
- Experience managing large trademark portfolios (1,000+ marks) across multiple international jurisdictions.
- Familiarity with domain name registration, portfolio management, and UDRP proceedings.
- Experience reviewing marketing and advertising content for legal compliance, including sweepstakes, promotions, and consumer-facing campaigns.
- Proven ability to manage outside counsel relationships and associated budgets.
- Experience supervising and mentoring legal staff and/or contractors.
- Excellent written and verbal communication skills, with the ability to distill complex legal issues for non-legal business audiences.
- Strong business acumen and judgment; ability to balance legal risk with business objectives.