Trademark Attorney - Legal Counsel

Schneider Electric•Nashville, TN

37d•Hybrid

About The Position

Schneider Electric has a hybrid opportunity (2 days a week in the office) for a Trademark Attorney to be based in one of the following Schneider Electric Hub locations: United States - Raleigh; Boston/Foxboro/Andover; Nashville; Dallas; Chicago or France - Paris; Grenoble or the UK - London. As a Trademark Attorney, you will join a talented, collaborative, and diverse group of in-house attorneys, paralegals, and legal professionals in a team-oriented environment within the company’s Global Trademark & Brand Protection Team to support trademark portfolio management and strategy for Schneider Electric’s businesses worldwide. This role will report to the Global Head of Trademark and Brand Protection in Schneider Electric.

Requirements

At least 3+ years’ experience in the field of intellectual property in managing trademark portfolios
Masters or Advanced degree in intellectual property law
Qualified professional representative under local national qualification system
Knowledge (relative to experience) of laws and practices under the Paris Convention and Madrid Protocol
Fluency/proficiency in English (oral & written)

Nice To Haves

Qualified, or part-qualified, professional representative before the local Intellectual Property Office
Prior in-house experience preferred
Demonstrate ability to direct and manage external counsel and agents
Excellent written and oral communication skills
Strong organizational, prioritization, and time management skills with a focus on responsibility and reliability
Exceptional attention to detail and ability to communicate clearly and effectively
Ability to learn and adapt to new software and technologies
Friendly and collaborative working style that embraces a diverse and inclusive global culture within a multinational organization
Strong organizational and project management skills
Ability to work independently and collaboratively with cross-functional teams
Strong analytic skills to identify and prioritize risk, evaluate associated risk mitigation actions and clearly summarize complex topics and needs

Responsibilities

Oversee and manage global trademark portfolios for various lines of business in collaboration with the team
Manage trademark filing, prosecution, and maintenance actions
Review office actions and provide appropriate response strategies to internal business clients
Perform, review and analyze trademark clearance search investigations and provide legal opinions and business risk analysis and advice to internal business and marketing clients
Review trademark watch notices and provide legal advice and recommendations on appropriate actions
Monitor, investigate and provide strategic legal advice and support to internal business and marketing clients on trademark and copyright infringement
Provide strategic legal and reputational risk advice to internal business and marketing managers for development and implementation of new products and services
Participate in the creation and drafting of global trademark policies and procedures
Collaborate in defining and implementing brand and trademark usage best practices and guidelines
Investigate and research online brand abuse findings and coordinate with internal business and marketing teams on appropriate response strategies and actions
Liaise with global network of outside counsel and agents in regards to trademark portfolio filings, prosecution, and maintenance
Provide support on strategic brand and legal advice and due diligence to internal business and marketing teams on acquisitions, divestitures, and brand migrations

Benefits

medical (with member reward points)
dental
vision
basic life insurance
Benefit Bucks (credits to apply towards your benefits)
flexible work arrangements
paid family leaves
401(k) + match
well-being and recognition (including service anniversary) programs
12 holidays per year
15 days of paid time off per year (pro-rated in the first year of employment based on start date)
opportunity to purchase company stock (eligibility depends on start date)
military leave benefits