Full-Time Director and Senior Legal Counsel, Trademarks and Brand Protection
Western Digital is hiring a remote Full-Time Director and Senior Legal Counsel, Trademarks and Brand Protection. The career level for this job opening is Experienced and is accepting San Jose, CA based applicants remotely. Read complete job description before applying.
Western Digital
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Job Summary:Western Digital’s trademarks, designs, logos and slogans are valuable assets vital to the company’s success and reputation. This position focuses on protecting and managing its trademark portfolio and enforcing against unauthorized use. This role leads the company’s development and preservation of its worldwide trademark portfolio, overseeing trademark licensing and brand enforcement in the Americas. Reports to the head of global Trademarks & Brand Protection.
Trademark Prosecution:
- Manages and supports development of global trademark strategy for preparation, filing, and prosecution of applications worldwide.
- Advises internal clients on trademark/product name selection, attending marketing, product development, and kickoff meetings.
- Advises clients on trademark clearance, adoption risks, and risk mitigation.
- Registers new marks using clear criteria for registration.
- Responds to office actions from trademark registries.
- Maintains data on countries where products are distributed/sold.
- Protects enforcement rights by maintaining data on counterfeit/infringement risks.
- Oversees evidence gathering for worldwide trademark use.
- Manages outside counsel on oppositions and cancellations.
- Promotes trademark portfolio and usage guidelines by training employees.
- Collaborates with regional leads on strategy to establish well-known trademark status.
- Maintains trademark usage guidelines for customers.
- Oversees trademark internal quality control process.
- Manages trademark licensing and advising on license provisions in agreements.
- Supports trademark review of marketing, advertising, and packaging materials.
- Supports trademark diligence in corporate transactions.
- Collaborates with copyright experts to obtain copyright protection for logos.
Brand Protection:
- Implements brand protection programs in specific jurisdictions.
- Manages pre-litigation enforcement, including cease and desist letters, and settlements.
- Manages criminal and civil pre-litigation activities.
- Oversees investigations, advising on strategy, drafting documents, and compiling/presenting data.
- Conducts factual research on infringing activity, test buys, identifies counterfeit products.
- Collects and preserves evidence of wrongdoing.
- Reviews and maintains the domain name portfolio, and works with partners to protect/enforce brands in cybersquatting proceedings.
- Partners with internal and external teams to identify fraudulent activities.
- Collaborates with external partners, like outside counsel, customs, law enforcement.
- Maintains and ensures ethical standards in investigations.
- Identifies and prioritizes jurisdictions for new enforcement options.
- Manages cases, reports results, measures return on brand protection.