Senior Specialist, Legal Trademarks jobs in United States
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Allergan Aesthetics, an AbbVie Company · 4 days ago

Senior Specialist, Legal Trademarks

Allergan Aesthetics, an AbbVie Company, is seeking a Senior Specialist in Legal Trademarks to manage and support AbbVie's global trademark portfolio. The role involves clearance, prosecution, and enforcement of trademarks, while collaborating with in-house attorneys and business units.

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Responsibilities

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
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
Analyze unauthorized online use of AbbVie's trademarks
Determine appropriate action(s) against unauthorized online use of AbbVie's trademarks and consult with AbbVie's 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 AbbVie's trademarks, as needed
Monitor watch notices and assist with opposition/conflict proceedings and organize evidence in support of such conflicts
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 AbbVie's 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

Qualification

Trademark prosecutionTrademark enforcementIntellectual property experienceMicrosoft Office proficiencyTrademark databases knowledgeCustomer service mindsetLeadership competenciesCommunication skillsOrganizational skillsProject management skills

Required

Bachelor's Degree, at minimum, required
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
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
Strong writing and analytical skills required to independently review, draft, and prepare documents
Proficiency in using Microsoft Word, Excel and PowerPoint applications
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
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
Significant contact with outside law firms, vendor and internal colleagues
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

Preferred

Knowledge and proficiency with trademark databases and docketing programs, particularly the TM Cloud docketing system, highly preferred

Benefits

Paid time off (vacation, holidays, sick)
Medical/dental/vision insurance
401(k)
Short-term incentive programs

Company

Allergan Aesthetics, an AbbVie Company

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At Allergan Aesthetics, an AbbVie company, we develop, manufacture, and market a portfolio of leading aesthetics brands and products.

Funding

Current Stage
Late Stage

Leadership Team

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Nicole Mowad-Nassar
Senior Vice President, AbbVie and President, Global Allergan Aesthetics
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Company data provided by crunchbase