Counsel, Intellectual Property - Trademark

Counsel, Intellectual Property - Trademarks

The Counsel, Intellectual Property - Trademarks, will be part of a team of attorneys and paralegals and partner closely with the senior members and legal leaders of the team, VF brand business teams and Legal Department colleagues to provide strategic oversight for, and execution and enforcement of, the intellectual property of several brands in VF's portfolio.

Let's break down that day-in-the-life a bit more.

• IP Portfolio Management: Work with the Associate General Counsel, Product, Marketing and IP to manage VF's trademark portfolios, including preparation, prosecution, counseling, clearance, due diligence, and enforcement, with a focus on infringing knockoff products and online enforcement.

• Team Leadership: Serve as lead intellectual property legal partner to VF emerging brands and core brands on all things trademark and trade dress. Advises the business and works with a team of paralegals to deliver comprehensive IP support, including the topics of trademark, copyright, music, trade dress and brand enforcement.

• Relationship-builder: Build strong partnerships with brand teams and Legal Department colleagues to understand business objectives, protect brand identity, enforce IP rights, and assess strategic objectives, strengths, risks, and needs.

• Trademark Management: Review and analyze trademark searches to determine availability, make strategic decisions alongside the Associate General Counsel and other senior members of the team on new filings, whether to oppose/cancel third-party applications/registrations and/or to defend trademark applications opposed by third parties, and domestic and international prosecution and enforcement strategy.

• Dispute Resolution: Prepare cease and desist letters alongside senior members of the team and outside counsel, negotiate settlements of trademark, copyright and trade dress disputes and draft/negotiate intercompany, trademark license, coexistence, and consent agreements.

• Corporate Support: Provide IP legal support for corporate restructuring projects, international tax initiatives, and mergers & acquisitions.

• Innovation Protection: Evaluate, protect, and prosecute new product design innovations through applicable IP protections and develop global internal processes for the same.

• Training: Develop and deliver training for product and marketing teams on IP principles, risks, and clearance processes, as well as patent-related training for R&D and other employees.

• Budget Management: Review and authorize third-party invoices, partnering with the controller and supervising attorney to ensure adherence to budget.

• Special Projects: Participate in special projects, such as selecting third-party vendors for IP management databases and other technology solutions, or addressing/understanding the use of AI and how to advise the business with respect thereto.

• Curiosity: Ability and desire to think differently and creatively. A drive to understand the "why" and to adjust the "how" to accommodate shifts in business strategy, decisions on approach, and competing business interests accordingly.

What do you need to succeed?

• Experience: 5+ years as an attorney at reputable law firms or in-house.

• Education: Juris Doctor from an ABA-accredited law school.

• IP Expertise: Experience with brand protection/enforcement, managing trademark portfolios, trademark prosecution, search and clearance, and communicating legal risk to client leadership

• Licensing: Admitted to practice law and in good standing in at least one state/jurisdiction. Member of at least one state bar

• Technical Skills: Conduct infringement assessments; balance legal risks with business realities; manage legal issues cost-effectively; understand technical aspects of VF's products.

• Leadership: Strong leadership skills; ability to lead, influence, and advise at all levels to become a trusted advisor with strong cross functional perspective.

• Communication: Excellent verbal and written communication skills.

• Work Style: Self-starter, able to work independently and as part of a team; proactive and able to work under pressure.

• Travel: Willingness to travel by air and overnight, up to 20% of the time.

• Location: This role can be located in either Costa Mesa, CA or Denver, CO.

Now we have a question for YOU. Are you in?