Trademark Enforcement Counsel

Local Jobs Thermo Fisher Scientific
  • United States, San Francisco, CA View on Map
  • Post Date : September 16, 2020
  • Apply Before : October 16, 2020
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Job Description

Job Description

Thermo Fisher Scientific’s Mission is to enable our customers to make the world healthier, cleaner and safer. Accomplishing that Mission includes protecting and enforcing the company’s global trademarks covering its innovative products and technologies.

Thermo Fisher Scientific has an exciting opportunity for experienced trademark enforcement counsel. This position, which reports to IP Litigation Lead Counsel, is primarily responsible for worldwide trademark auditing, monitoring, and enforcement and managing contested trademark invalidation proceedings.

This role can be based at our sites in Carlsbad, CA (San Diego area); South San Francisco, CA; Sunnyvale/San Jose, CA; Pittsburgh, PA; or Waltham, MA (Boston area) where the IP team has critical mass. Other locations may be possible for exceptional candidates.

At Thermo Fisher, we thrive in a culture of learning and development and are looking for a candidate that can do the same. This position will allow you flexibility and opportunities for growth by regularly supporting a variety of projects outside core trademark responsibilities and collaborating with colleagues outside the litigation and trademark teams. Success in this role will require excellent judgment, strong communication skills, desire to support your colleagues’ success, and a passion for continuous improvement.


Primary Responsibilities

  • Manage global trademark monitoring and enforcement, including collaboration with IP litigation team when necessary.
  • Establish global programs to identify, monitor and prevent trademark misuse, infringement and counterfeiting.
  • Manage rigorous global enforcement of trademark rights, including cease & desist communications, customs and border office protection, domain name disputes (e.g., UDRP), and prosecution and defense of opposition, cancellation and invalidation proceedings.
  • Lead strategy on worldwide trademark procurement, registration and portfolio management, including driving training program for business partners and establishing coordinated global strategy.
  • Assess and maximize trademark and brand value in cooperation with corporate and business brand strategy teams.
  • Provide pragmatic and actionable counsel on risk analysis and mitigation strategies for trademarks, trade dress, product designs, and domain names.
  • Counsel business stakeholders on trademark value, rights and protection strategies as well as deals and agreements implicating trademark rights.
  • 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.
  • Manage work performed by outside service providers, including outside counsel.


Minimum qualifications

  • Law degree and minimum of 10 years of experience in global trademark monitoring, enforcement and defense. Experience managing a global trademark portfolio of an international corporation as outside or in-house counsel strongly preferred.
  • A solid record of brand protection, global trademark office experience and thorough understanding of U.S. and foreign trademark law and enforcement practices.
  • Comprehensive experience (1) developing and setting strategies to identify and resolve trademark infringement, (2) prosecuting counterfeiters, domain name registrants and trademark squatters, and (3) training internal stakeholders on best practices for building and protecting brand value.
  • Experience conducting online investigations, notice and take down procedures, and other trademark and brand protection mechanisms.
  • Experience with domain name portfolio management and enforcement actions, including UDRP proceedings.
  • 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, results-orientation, collaborative/team instinct, can-do attitude, and demonstrable history of working collaboratively and effectively across organizational and geographic boundaries.

Thermo Fisher Scientific is an EEO/Affirmative Action Employer and does not discriminate on the basis of race, color, religion, sex, sexual orientation, gender identity, national origin, protected veteran status, disability or any other legally protected status.

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