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Posted January 22, 2020

Trademark Counsel

Thermo Fisher Scientific
San Jose, CA Full Time

Thermo Fisher Scientific has an exciting opportunity for experienced trademark counsel to join its intellectual property department in Carlsbad, CA (San...

Thermo Fisher Scientific has an exciting opportunity for experienced trademark counsel to join its intellectual property department in Carlsbad, CA (San Diego area), San Francisco/San Jose, CA, or Boston, MA. This position is primarily responsible for worldwide trademark auditing, monitoring, and enforcement and managing contested trademark proceedings and oppositions.

Primary Responsibilities

Manage global trademark monitoring and enforcement, including collaboration with IP litigation team when necessary.

Establish programs to identify, monitor and prevent trademark misuse, infringement and counterfeiting.

Counsel business stakeholders regarding trademark rights and protection strategies.

Conduct and manage trademark oppositions and cancellation proceedings.

Assess and maximize trademark and brand value in cooperation with corporate and business brand strategy teams.

Drive continuous improvement in existing trademark practices, including procurement, policy and training.

Work closely with team of trademark specialists to manage and optimize value from trademark budget

Minimum qualifications

Law degree and minimum of 5-7 years of trademark strategy and protection experience, including monitoring, enforcement and brand protection.

A solid record of trademark monitoring and enforcement, TTAB experience and comprehensive understanding of U.S. and foreign trademark law and enforcement practices.

Demonstrated abilities to manage outside counsel, control costs, and exercise sound business and legal judgment.

Exceptional interpersonal and communication (written and verbal) skills, strong initiative, collaborative/team instinct, can-do attitude, and demonstrable history of working collaboratively and effectively across organizational and geographic boundaries are essential.

Preferred qualifications

Experience managing a global trademark portfolio of an international corporation either as outside counsel or in-house counsel.

Experience conducting online investigations, notice and takedown procedures, and other trademark and brand protection mechanisms.

This listing expired on Mar 22. Applications are no longer accepted.

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