Global Trademark Expert

1 month ago


Green Oaks, Illinois, United States Abbott Full time
{"title": "Job Description", "subtitle": "Senior Trademark Counsel", "content": "

At Abbott, we seek a highly experienced trademark attorney to join our global trademark team.

The ideal candidate will possess strong knowledge of global trademark law, including clearance, prosecution, enforcement, and contractual work.

The candidate will work closely with Abbott businesses to create and execute on brand strategies and will work around the world to protect Abbott trademarks from infringement.

This position can be based in Abbott Park, Illinois, or Chicago, Illinois.

Responsibilities:

The successful candidate must possess the following skills:

  1. Collaborate with marketing colleagues to develop global, regional, and local trademark/brand strategy based on business objectives
  2. Advising and ensuring that internal clients receive sound, practical, and timely legal advice on matters related to trademarks, copyrights, and social media
  3. Reviewing and analyzing search results from jurisdictions all over the world, and conveying results of such analyses to the business in a clear way
  4. Preparing trademark applications and other prosecution documents for filing; monitoring and maintaining applications through registration
  5. Managing trademark oppositions, cancellations, and litigation around the world; managing outside counsel in those actions
  6. Resolving trademark disputes using negotiation skills, judgment, creativity, and legal expertise, including pre-litigation dispute resolution and settlements
  7. Reviewing and analyzing trademark watch notices to assess threat to Abbott businesses and develop strategy to combat confusingly similar applications
  8. Reviewing and revising intellectual property provisions in agreements
  9. Helping select and/or directing the work of outside counsel, defining project objectives, managing projects, and monitoring outside counsel operations within budget.

Qualifications:

The ideal candidate will possess the following qualifications:

  1. Juris Doctor degree from an accredited law school, demonstrate a strong academic background, be admitted to a US state bar in good standing, have or be able to obtain appropriate licensure to practice law
  2. 6+ years of legal experience in a law firm or corporate legal environment
  3. Experience successfully representing and managing the legal affairs of a business having international operations
  4. Must be able to move easily between a hands-on, operations-focused view and a strategic outlook
  5. Knowledge and experience working across different cultures

Preferred Qualifications:

The ideal candidate will possess the following preferred qualifications:

  1. Ability to work in a highly matrixed and geographically diverse business model including flexibility to work with different time zones where appropriate.
  2. Ability to build collaborative relationships with leaders and co-workers at all levels.
  3. Ability to travel domestically and internationally when appropriate (approximately 10%).

Critical Success Factors:

The ideal candidate will possess the following critical success factors:

  1. Demonstrate expertise and sound judgment, understand how assigned responsibilities support Abbott's business objectives, and be able to provide practical, risk-balanced advice based upon a thorough understanding of the scope of an issue, taking full advantage of internal networks and external intelligence.
  2. Firm understanding of available legal, functional, and business resources and ability to integrate information from a number of sources to achieve business results, including breaking down boundaries to create alignment as necessary, in a complex, global, matrixed environment. Able to work as part of a team; successful leadership and support of others on the team.
  3. Holistic, big picture thinker, who anticipates changes in law, enforcement, and/or business objectives and adapts approach as necessary to manage risks effectively. Creative thought process, and able to use a start-up mindset in a larger corporate environment.
  4. Build strong relationships with business partners to tactfully influence and gain their support to drive desired outcomes. Be invested in the business you support.
", "location": "Abbott Park, Illinois, or Chicago, Illinois", "salary": "$143,300.00 – $286,700.00"}

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