Director and Senior Legal Counsel, Trademarks and Brand Protection

Western Digital • San Jose, CA

427d

About The Position

The position is focused on leading the development and preservation of Western Digital's worldwide trademark portfolio and overseeing trademark licensing and brand enforcement programs in the Americas. The role is critical for protecting the company's trademarks and brand assets, ensuring compliance, and managing brand protection strategies against unauthorized use.

Requirements

• J.D. degree from accredited law school; top 50 law school strongly preferred.
• Current member of a state bar in good standing.
• 8+ years post bar experience in trademark and intellectual property law, including experience in trademark prosecution/counseling/strategy, trademark litigation and brand enforcement.
• 4 years of experience at a top tier law firm and 3 or more years of experience in-house preferred.
• Demonstrated experience as a proactive and strategic trademark and brand protection partner to internal business teams.
• Ability to communicate legal advice and risk mitigation strategies in clear terms to internal clients.
• Experience managing a docket for a large global trademark portfolio, including conducting global clearances.
• Experience handling litigation matters, including evidence preparation and preservation.
• Strong understanding of trademark laws and enforcement strategies in foreign jurisdictions.

Nice To Haves

• Familiarity with state and federal criminal and civil legal systems; knowledge of foreign jurisdictions desirable.
• Strong interest in understanding and working with technology products.

Responsibilities

• Manage and support the development of the Company's strategy for global trademark preparation, filing and prosecution of trademark applications worldwide.
• Counsel and collaborate with internal clients on strong trademark/product name selection, including attendance at key marketing, product development and kickoff meetings.
• Advise internal clients on trademark clearance results, risks of adoption for proposed new marks, and measures to mitigate risk.
• Register new marks using clear criteria for registration of marks.
• Respond to office actions issued by global trademark registries to obtain trademark registrations for pending marks.
• Ensure the Company has the right to use its trademarks by maintaining data on countries where the Company's products are distributed, sold and serviced.
• Protect the Company's right to enforce its brand and trademarks by maintaining data on countries where the Company faces counterfeit or infringement risks.
• Oversee procedures for gathering evidence of use of WD trademarks worldwide.
• Maintain understanding and knowledge of WD products and services.
• Manage outside counsel on worldwide trademark oppositions and cancellations to protect enforcement rights.
• Promote awareness of the Company's trademark portfolio and usage guidelines by training employees and authorized third parties.
• Collaborate with other regional brand protection leads to establish a strategy for expanding well-known status of WD trademarks.
• Maintain trademark usage guidelines for customers to protect the Company's trademark rights.
• Oversee trademark internal quality control process.
• Manage and support licensing of WD trademarks, including advising on trademark license provisions in agreements with partners.
• Support trademark review of all forms of marketing, advertising and packaging materials compliance with the Company's trademark usage guidelines.
• Support trademark diligence with respect to corporate transactions.
• Collaborate with internal copyright experts to determine strategy for obtaining copyright protection for the Company's logos.
• Implement brand protection programs in specific jurisdictions within the global company strategy.
• Manage pre-litigation enforcement activity including cease and desist letters and negotiating settlements.
• Manage criminal and civil pre-litigation activities, such as raids and investigations, and work with local counsel.
• Oversee investigations including advising on strategy, drafting documents, and compiling data.
• Conduct factual research of infringing activity, including orchestrating test buys and identifying counterfeit products.
• Collect and preserve evidence of wrongdoing to maintain availability of all enforcement options.
• Review and support the maintenance of the Company's domain name portfolio.
• Partner with internal and external teams to identify new targets and fraudulent activities.

Benefits

• Paid vacation time
• Paid sick leave
• Medical/dental/vision insurance
• Life, accident and disability insurance
• Tax-advantaged flexible spending and health savings accounts
• Employee assistance program
• Voluntary benefit programs such as supplemental life and AD&D, legal plan, pet insurance, critical illness, accident and hospital indemnity
• Tuition reimbursement
• Transit benefits
• Employee stock purchase plan
• Western Digital Savings 401(k) Plan

What This Job Offers

• Job Type: Full-time
• Career Level: Mid Level
• Industry: Computer and Electronic Product Manufacturing
• Education Level: No Education Listed
• Number of Employees: 5,001-10,000 employees