Legal Counsel - Intellectual Property & Transactions

O'Reilly Auto Parts•Headquarters, KY

About The Position

Reports to Associate General Counsel/Director of Transactions and Litigation but works with all lawyers in the Legal Department. This team member will provide strategic intellectual property portfolio management of the Company’s trademarks, working with the marketing, merchandising and professional sales teams to develop and implement protection strategy of corporate and brand marks and overseeing and coordinating with outside counsel to execute on that strategy. This team member also will provide legal review, drafting, analysis, editing and negotiation as required of all vendor and merchandising contracts, work in conjunction with the business teams seeking contract engagement with vendors and suppliers, and assess and advise on risk and steps to mitigate exposure while achieving the Company’s business objectives. This team member will manage numerous matters simultaneously in a deadline-driven retail environment. ESSENTIAL JOB FUNCTIONS · Oversee management of the Company’s international intellectual property portfolio, including: · Work with business stakeholders and outside counsel to develop and execute a comprehensive strategy for maintenance, renewal and protection of Company trademarks and word marks; · Conduct or oversee trademark clearance searches for new brand names, slogans, and marketing campaigns to ensure avoidance of infringement; · Manage and oversee trademark registrations, application filings and responses to office actions; · Actively monitor market, online marketplaces, social media, etc. for infringing use of Company marks; · Manage and oversee enforcement of Company marks; · Collaborate with applicable customs officials and programs to protect against importation of counterfeit goods; · Draft, negotiate and review trademark licensing agreements and trademark assignment agreements; · Conduct IP due diligence for acquisitions and other strategic transactions, including evaluating the IP portfolios of potential acquisition targets and partners; · Supervise trademark docketing to ensure deadline compliance; · Work with business stakeholders to ensure proper trademark usage across the enterprise, including ensuring compliance with IP laws and regulations and developing IP policies and procedures to mitigate legal risks and providing training to team members regarding the same; INTELLECTUAL PROPERTY DUTIES Oversee management of the Company’s international intellectual property portfolio, including: Work with business stakeholders and outside counsel to develop and execute a comprehensive strategy for maintenance, renewal and protection of Company trademarks and word marks; Conduct or oversee trademark clearance searches for new brand names, slogans, and marketing campaigns to ensure avoidance of infringement; Manage and oversee trademark registrations, application filings and responses to office actions; Actively monitor market, online marketplaces, social media, etc. for infringing use of Company marks; Manage and oversee enforcement of Company marks; Collaborate with applicable customs officials and programs to protect against importation of counterfeit goods; Draft, negotiate and review trademark licensing agreements and trademark assignment agreements; Conduct IP due diligence for acquisitions and other strategic transactions, including evaluating the IP portfolios of potential acquisition targets and partners; Supervise trademark docketing to ensure deadline compliance; Work with business stakeholders to ensure proper trademark usage across the enterprise, including ensuring compliance with IP laws and regulations and developing IP policies and procedures to mitigate legal risks and providing training to team members regarding the same; TRANSACTIONAL DUTIES Draft, review, edit and negotiate a broad range of commercial agreements including first-party paper agreements such as Supplier Agreements, NDAs, Trademark Licensing Agreements, and Settlement Agreements, as well as third-party paper agreements such as vendor contracts, MSAs, SOWs, SaaS agreements, software licenses, sponsorship agreements, platform agreements, and consulting and professional services agreements; Maintain, draft, update and standardize, as necessary, Company forms, templates, terms, and conditions, include good, better, best fallback positions for use across business functions; Provide clear, practical, business-oriented legal advice to business stakeholders regarding contract structure, legal exposure, risk allocation and mitigation, operational requirements and dispute avoidance and explaining complicated legal concepts; Work closely with business stakeholders including merchandising, supply chain logistics, marketing, IT, finance, HR, store operations, DC operations and other departments to support strategic and day-to-day commercial initiatives; Assist business stakeholders in managing contracts through lifecycle including, negotiation, approvals, escalation, execution, amendments, renewals, notices and termination; Draft and review both internal and customer facing terms, website and app terms, marketplace terms, promotional terms, loyalty program terms and conditions, and related disclosures; Spot and escalate where necessary issues involving privacy, cybersecurity, employment, real estate, tax, regulatory compliance, customs and trade, consumer protection and competition law and coordinate with the various business stakeholders to ensure compliance and risk mitigation; Provide and deliver appropriate contract related training to business stakeholders related to contract processes, template usage, approval requirements, signatory authority, key legal terms, common areas of risk and negotiation standards; Identify, develop and refine contracting workflows, intake processes, approval matrices, clause library, legal playbooks and contract management practices, including CLM implementation.

Requirements

JD from an ABA accredited law school
Active and in good standing with at least one State Bar
8+ years of legal experience, including at least 5 years in intellectual property law in an in house or law firm setting
Strong analytical, problem solving, and evaluation skills
Excellent interpersonal and communication skills
Strong legal acumen with the ability to demonstrate sound judgment
Willingness to tackle matters in and outside areas of expertise with a can-do attitude, understanding that no job is too big or too small
Ability to work independently as well as collaboratively with business teams
Ability to manage and prioritize tasks in a dynamic, fast-paced, and often deadline-driven environment and adapt quickly to changing priorities and legal and regulatory environments
Excellent negotiation skills
Outstanding attention to detail and accuracy

Nice To Haves

In-house legal experience
Transactional experience
Licensed to practice before the U.S. Patent and Trademark Office
Experience in managing an international intellectual property portfolio
Commercial litigation experience

Responsibilities

Oversee management of the Company’s international intellectual property portfolio
Work with business stakeholders and outside counsel to develop and execute a comprehensive strategy for maintenance, renewal and protection of Company trademarks and word marks
Conduct or oversee trademark clearance searches for new brand names, slogans, and marketing campaigns to ensure avoidance of infringement
Manage and oversee trademark registrations, application filings and responses to office actions
Actively monitor market, online marketplaces, social media, etc. for infringing use of Company marks
Manage and oversee enforcement of Company marks
Collaborate with applicable customs officials and programs to protect against importation of counterfeit goods
Draft, negotiate and review trademark licensing agreements and trademark assignment agreements
Conduct IP due diligence for acquisitions and other strategic transactions, including evaluating the IP portfolios of potential acquisition targets and partners
Supervise trademark docketing to ensure deadline compliance
Work with business stakeholders to ensure proper trademark usage across the enterprise, including ensuring compliance with IP laws and regulations and developing IP policies and procedures to mitigate legal risks and providing training to team members regarding the same
Draft, review, edit and negotiate a broad range of commercial agreements including first-party paper agreements such as Supplier Agreements, NDAs, Trademark Licensing Agreements, and Settlement Agreements, as well as third-party paper agreements such as vendor contracts, MSAs, SOWs, SaaS agreements, software licenses, sponsorship agreements, platform agreements, and consulting and professional services agreements
Maintain, draft, update and standardize, as necessary, Company forms, templates, terms, and conditions, include good, better, best fallback positions for use across business functions
Provide clear, practical, business-oriented legal advice to business stakeholders regarding contract structure, legal exposure, risk allocation and mitigation, operational requirements and dispute avoidance and explaining complicated legal concepts
Work closely with business stakeholders including merchandising, supply chain logistics, marketing, IT, finance, HR, store operations, DC operations and other departments to support strategic and day-to-day commercial initiatives
Assist business stakeholders in managing contracts through lifecycle including, negotiation, approvals, escalation, execution, amendments, renewals, notices and termination
Draft and review both internal and customer facing terms, website and app terms, marketplace terms, promotional terms, loyalty program terms and conditions, and related disclosures
Spot and escalate where necessary issues involving privacy, cybersecurity, employment, real estate, tax, regulatory compliance, customs and trade, consumer protection and competition law and coordinate with the various business stakeholders to ensure compliance and risk mitigation
Provide and deliver appropriate contract related training to business stakeholders related to contract processes, template usage, approval requirements, signatory authority, key legal terms, common areas of risk and negotiation standards
Identify, develop and refine contracting workflows, intake processes, approval matrices, clause library, legal playbooks and contract management practices, including CLM implementation

Benefits

Competitive Wages & Paid Time Off
Stock Purchase Plan & 401k with Employer Contributions Starting Day One
Medical, Dental, & Vision Insurance with Optional Flexible Spending Account (FSA)
Team Member Health/Wellbeing Programs
Tuition Educational Assistance Programs
Opportunities for Career Growth

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