Senior Trademark Counsel

1 month ago


Green Oaks, Illinois, United States Abbott Full time
Job Title: Senior Trademark Counsel

Abbott is a global healthcare leader that helps people live more fully at all stages of life. Our portfolio of life-changing technologies spans the spectrum of healthcare, with leading businesses and products in diagnostics, medical devices, nutritionals, and branded generic medicines.

Job Summary:

We are seeking an experienced trademark attorney to join our global trademark team and be part of an innovative group dedicated to elevating trademark practice to best align with Abbott's cutting-edge diverse businesses that bring life-changing technology to people all over the world.

Key Responsibilities:
  • Collaborate with marketing colleagues to develop global, regional, and local trademark/brand strategy based on business objectives.
  • Advising and ensuring that internal clients receive sound, practical, and timely legal advice on matters related to trademarks, copyrights, and social media.
  • Reviewing and analyzing search results from jurisdictions all over the world, and conveying results of such analyses to the business in a clear way.
  • Preparing trademark applications and other prosecution documents for filing; monitoring and maintaining applications through registration.
  • Managing trademark oppositions, cancellations, and litigation around the world; managing outside counsel in those actions.
  • Resolving trademark disputes using negotiation skills, judgment, creativity, and legal expertise, including pre-litigation dispute resolution and settlements.
  • Reviewing and analyzing trademark watch notices to assess threat to Abbott businesses and develop strategy to combat confusingly similar applications.
  • Reviewing and revising intellectual property provisions in agreements.
  • Helping select and/or directing the work of outside counsel, defining project objectives, managing projects, and monitoring outside counsel operations within budget.
Requirements:
  • 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.
  • 6+ years of legal experience in a law firm or corporate legal environment.
  • Experience successfully representing and managing the legal affairs of a business having international operations.
  • Must be able to move easily between a hands-on, operations-focused view and a strategic outlook.
  • Knowledge and experience working across different cultures.
Preferred Qualifications:
  • Ability to work in a highly matrixed and geographically diverse business model including flexibility to work with different time zones where appropriate.
  • Ability to build collaborative relationships with leaders and co-workers at all levels.
  • Ability to travel domestically and internationally when appropriate (approximately 10%).
Critical Success Factors:
  • 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.
  • 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.
  • 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.
  • Build strong relationships with business partners to tactfully influence and gain their support to drive desired outcomes. Be invested in the business you support.

The base pay for this position is $143,300.00 – $286,700.00. In specific locations, the pay range may vary from the range posted.



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