Sr. Trademark Counsel

The Senior Global Trademark & Brand Protection Counsel will manage all aspects of the global trademark portfolios for specified Ford brands Ford Blue (Truck Performance) Ford Pro FCSD. This includes global clearance prosecution maintenance watching enforcement licensing/agreements counseling training and other related tasks. They will develop relationships with key stakeholders in their assigned brands/business units and provide day-to-day counseling. This role serves as the primary trademark liaison for the several key clients including FCSD and Global Brand Protection Ford Performance and Ford Pro clients.

RESPONSIBILITIES:

• Client Counseling Develop relationships with key stakeholders in the brands/business units he/she is responsible for and provide day-to-day counseling to assigned brand/business units. Serve as the primary trademark liaison for key clients: FCSD and Global Brand Protection Ford Performance and Ford Pro. Forge relationships with Business Unit/Brand business stakeholders as well as other OGC Marketing Compliance team. Identify opportunities for one-on-one and group trademark trainings for business and brand stakeholders on key topics like clearance searches proper trademark use symbols copyright legal lines avoiding infringement and social media use.
• Global Trademark Protection Strategy Development and Implementation - For assigned brands/businesses continually develop and evaluate trademark protection needs to ensure the business has freedom to use trademarks in the intended countries for the intended goods/services.
• Trademark Clearance - In collaboration with the Global Marketing Nomenclature Team support all search requests for assigned trademark portfolios and provide business-focused clearance opinions.
• Global Trademark Prosecution Maintenance and Portfolio Management: Support the filing of new trademarks applications once cleared around the world. Support prosecution-related tasks for all applications including office actions statements of use and post-registration maintenance tasks. Support renewal and maintenance activities for all trademark registrations on his/her docket.
• Watching & Competitive Intelligence - Support review of watch notices for assigned brand/business units.
• Conflict & Dispute Management
  • Support pursuit of and defense of any administrative disputes (Oppositions Cancelation Invalidation) related to any of the trademark applications or registrations for which he/she is responsible.
  • Serve as subject matter expert on strategic trademark enforcement and anti-counterfeiting efforts in support of the Global Brand Protection teams efforts to pursue enforcement against counterfeits infringements and other misuses of Fords trademark including both in civil and criminal contexts.
• Agreements Licensing & Transactions - Provide transactional support for assigned brands/business units including trademark licenses co-branding agreements copyright licenses and supporting trademark and copyright-related aspects of corporate transactions.
• Outside Counsel/Foreign Associate Management - Day-to-day management of outside counsel/foreign associate relationships on assigned business units/brands including setting matter budgets ensuring outside counsel performs work in accordance with Fords expectations and ensuring that Ford is using outside counsel efficiently.
• Subject Matter Expertise
  • Serve as the subject matter expert on anti-counterfeiting and enforcement globally. Stay up to date on latest developments in brand protection and anti-counterfeiting including online takedown domain enforcement civil and criminal enforcement and dealing with online platforms.
  • Possess deep knowledge of USPTO trademark practice in prosecution maintenance and administrative disputes.

REQUIRED SKILLS AND ABILITIES

• Ability to build rapport with marketing and nomenclature clients
• Ability to communicate clearly and with a business-focused lens
• Skilled at communicating with non-native English-speaking clients and outside counsel
• Deep knowledge of USPTO trademark practice in prosecution maintenance and administrative disputes

EXPERIENCE:

• A minimum of 10-12 years of global trademark and copyright experience including extensive experience with global trademark clearance and searching global trademark prosecution management of global administrative trademark disputes global trademark enforcement and counseling business clients on trademark matters
• A combination of law firm and in-house experience preferred
• Seasoned experience managing large global trademark portfolios
• Transactional experience in trademark and copyright licensing and co-branding and providing trademark and copyright expertise for large corporate transactions

EDUCATION:

• Juris Doctor

LICENSING:

• License to practice law in a U.S. state or District of Columbia