New York, NY, 10176, USA
1 day ago
In House Counsel
Description Our client, an international luxury goods retailer, is seeking a highly skilled Senior Intellectual Property Counsel to join their US Legal Department. This role is pivotal in creating and implementing strategies and objectives, managing trademark disputes and litigations, supporting trademark clearances and prosecution as well as managing the Legal Anti-Diversion team. Intellectual Property: • Managing U.S. Intellectual Property disputes. This includes the following responsibilities: o Draft and review cease and desist letters and other correspondence relating to IP infringements; o Prepare opposition notices and cancellation petitions for USPTO; o Negotiate, draft and revise settlement agreements; o Manage international TM disputes and partner with US Head of Intellectual Property and global team to create universal strategy, implement the strategy in the US; and o Manage relationships and case expectations with outside counsel handling TTAB proceedings and various intellectual property infringement matters. • Create and implement IP strategies and objectives that align with global and regional priorities. • Prosecute Trademark applications, including assisting in trademark clearance searches, advise Trademark Manager on responses to USPTO office actions and renewals. • Advise key stakeholders on topics regarding copyright, patent, domain name and trade secret. • Partner with the US Legal corporate team to prepare, draft and negotiate commercial contracts, as needed. • People management: manage the senior paralegal including creating priorities and associated responsibilities for this role. Anti-Diversion: • Develop, define, and implement strategies to achieve program objectives. • Plan, organize, and direct the operations of the program. • Align program objectives with company's long-term vision for the Brand. • Set and review KPIs to meet program objectives. • Develop and implement strategies to maximize commercial and legal actions. • Partner with internal and external stakeholders to enforce policies, mitigate diversion, and protect company's authorized distribution. • Partner with Global Anti-Diversion in the worldwide execution of the program. • Develop and issue US reporting to Leadership and Senior Management. • Develop and implement educational resources to increase program knowledge and efficiency. • Manage the program budget to maximize cost effectiveness. • Manage the Legal Anti-Diversion team. Years of experience needed - at least 7 years in trademark and IP. Anti-diversion experience is *not* needed. Salary is commensurable with experience - about $135K - $185K + 15% target annual bonus. Requirements You are energized by: · Working in a highly collaborative environment, building relationships with stakeholders at all levels and across all divisions and in operations · Representing company on trade association task forces and committees · Collaborating with global counterparts as to trademark matters with global implications · Practicing US Trademark law and other areas of Intellectual Property · Leading and developing a team · Delivering deadlines and accountabilities · Continuously looking out for new opportunities to improve processes · Succeeding in a dynamic, results oriented environment What you will bring to the team: · JD from an accredited Law school. · Minimum 7 years of experience in the trademark area handling trademark prosecution matters, clearance searches, proceedings in the USPTO and abroad, and US litigations. Law firm experience preferred. · Deep understanding of intellectual property law, primarily focusing on trademarks with some copyright and patent knowledge · Strong organizational skills and attention to details. · Clear and concise communications skills, excellent interpersonal skills and creative thinking. · Tech-savvy, including proficiency with cloud-based document and database systems. · Ability to work proactively, independently and reliably on multiple projects, under tight time frames in a fast-paced environment. Robert Half is the world’s first and largest specialized talent solutions firm that connects highly qualified job seekers to opportunities at great companies. We offer contract, temporary and permanent placement solutions for finance and accounting, technology, marketing and creative, legal, and administrative and customer support roles. Robert Half works to put you in the best position to succeed. We provide access to top jobs, competitive compensation and benefits, and free online training. Stay on top of every opportunity - whenever you choose - even on the go. Download the Robert Half app (https://www.roberthalf.com/us/en/mobile-app) and get 1-tap apply, notifications of AI-matched jobs, and much more. All applicants applying for U.S. job openings must be legally authorized to work in the United States. Benefits are available to contract/temporary professionals, including medical, vision, dental, and life and disability insurance. Hired contract/temporary professionals are also eligible to enroll in our company 401(k) plan. Visit roberthalf.gobenefits.net for more information. © 2025 Robert Half. Robert Half is not a law firm and does not provide legal representation. Robert Half project lawyers do not constitute a law firm among themselves. An Equal Opportunity Employer. M/F/Disability/Veterans. 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