Senior Specialist, Legal Trademarks

The Legal Specialist - Trademarks is responsible for the management and support of clearance prosecution and enforcement related to AbbVies global trademark portfolio. This position works closely with the responsible in-house trademark attorneys in analyzing complex legal issues developing and executing strategic solutions while acting as a liaison with business units and outside counsel worldwide. The role includes analyzing unauthorized online use of AbbVies trademarks and determining appropriate enforcement actions in consultation with AbbVies trademark attorneys. This position will be based in our Irvine CA office with a hybrid work model (onsite 3 days/week).

Core Responsibilities:

Trademark Prosecution & Portfolio Management

• Manage filing and maintenance of domestic and international trademark applications recordal of assignments renewals office actions and new filings including management of docket to ensure all deadlines are met.
• Prepare and prosecute US trademark applications in oncology therapeutic area and aesthetics and coordinate with foreign law firms in connection with OUS trademark applications.
• Review correspondence from foreign counsel prepare draft responses for attorney review and communicate instructions to agents regarding office actions and other requests.
• Communicate with foreign agents and the USPTO regarding status.

Trademark Clearance & Research

• Conduct research for trademark availability and coordinate with foreign law firms in connection with OUS research.
• Assist in US and foreign trademark searches including online searching to determine the availability of trademarks and prepare summaries for in-house counsel.

Enforcement & Brand Protection

• Analyze unauthorized online use of AbbVies trademarks.
• Determine appropriate action(s) against unauthorized online use of AbbVies trademarks and consult with AbbVies trademark attorneys as needed.
• Prepare correspondence with internal colleagues summarizing various enforcement actions taken and further information needed.
• Coordinate with vendors and outside law firms to assist with unauthorized online use of AbbVies trademarks as needed.
• Monitor watch notices and assist with opposition/conflict proceedings and organize evidence in support of such conflicts.

Business & Stakeholder Coordination

• Communicate directly with business units concerning current use of trademarks and obtain evidence in support of use.
• Evaluate research and provide appropriate legal statements on AbbVies carton packages and labels.
• Coordinate trademark file transfers and prepare necessary documentation in connection with trademarks portfolio acquisition and divestitures.
• Oversee execution and legalization of documents such as trademark assignments powers of attorney consents etc. for submission in international trademark matters.

Qualifications :

Education

• Bachelors Degree at minimum required

Experience

• Minimum 5 years experience within law firm or intellectual property department of corporation
• Minimum 3 years experience with trademark enforcement activities
• Extensive knowledge of domestic and international regulations policies and processes related to trademark prosecution

Communication & Interpersonal Skills

• Discretion and strong communication skills required to effectively gather relevant information from internal and external clients and interact with others both inside and outside the Company
• Excellent organizational interpersonal and oral and written communication skills

Technical & Analytical Skills

• Strong writing and analytical skills required to independently review draft and prepare documents
• Proficiency in using Microsoft Word Excel and PowerPoint applications
• Knowledge and proficiency with trademark databases and docketing programs particularly the TM Cloud docketing system highly preferred

Organizational & Project Management

• Strong organizational project management and multitasking skills to manage multiple competing matters set own work priorities meet required work deadlines and follow-up on outstanding requests
• Must be able to prioritize meet deadlines and be flexible to adapt to changing organizational needs

Professional Attributes

• Must be self-motivated detail-oriented with high work standards
• Frequently handles confidential or business-sensitive information with a high level of discretion maturity and ethical integrity
• Strong customer service mindset
• Demonstrates strong leadership competencies
• Flexibility to take on special projects and/or additional responsibilities as needed
• Participates in cross-functional team assignments and meetings across other sites

Accountabilities / Scope

• Significant contact with outside law firms vendor and internal colleagues
• Must be self-motivated detail-oriented with high work standards
• Frequently handles confidential or business-sensitive information with a high level of discretion maturity and ethical integrity
• Manage multiple competing matters set own work priorities meet required work deadlines and follow-up on outstanding requests
• This consolidated position combines comprehensive trademark portfolio management with specialized enforcement expertise requiring both technical proficiency in trademark prosecution systems and strategic judgment in brand protection matters

Additional Information :

Applicable only to applicants applying to a position in any location with pay disclosure requirements under state or local law: 

• The compensation range described below is the range of possible base pay compensation that the Company believes in good faith it will pay for this role at the time ofthis posting based on the job grade for this position. Individual compensation paid within this range will depend on many factors including geographic locationand we may ultimately pay more or less than the posted range. This range may be modified in the future. 

• We offer a comprehensive package of benefits including paid time off (vacation holidays sick) medical/dental/vision insurance and 401(k) to eligible employees.

• This job is eligible to participate in our short-term incentive programs. 

Note: No amount of pay is considered to be wages or compensation until such amount is earned vested and determinable. The amount and availability of anybonus commission incentive benefits or any other form of compensation and benefits that are allocable to a particular employee remains in the Companys soleand absolute discretion unless and until paid and may be modified at the Companys sole and absolute discretion consistent with applicable law. 

AbbVie is an equal opportunity employer and is committed to operating with integrity driving innovation transforming lives and serving our community. Equal Opportunity Employer/Veterans/Disabled. 

US & Puerto Rico only - to learn more visit  & Puerto Rico applicants seeking a reasonable accommodation click here to learn more:

Work :

No

Employment Type :

Full-time