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Director and Senior Legal Counsel, Trademarks and Brand Protection

Western Digital
Providence, RI Full Time
POSTED ON 1/27/2025
AVAILABLE BEFORE 4/21/2025

Western Digital Director and Senior Legal Counsel, Trademarks and Brand Protection

At Western Digital, we are on a mission to unlock the potential of data so people, companies and organizations everywhere can create what’s next. To fulfill our vision, we are always on the lookout for potential team members who share our passion for solving problems to empower others.

When you join Western Digital, you join a legacy more than 50 years in the making. Across our Western Digital, SanDisk, SanDisk Professional, WD and WD_BLACK brands, we have brought some of the most storied advancements in memory and data storage technology to market—and our best, most innovative work is yet to come.

From energizing gaming platforms, to enabling systems to make cities safer and cars smarter and more connected, to powering the data centers behind many of the world’s biggest companies and public cloud, Western Digital is fueling a brighter, smarter future.

Job Summary :

Western Digital’s trademarks, designs, logos and slogans are valuable assets that are vital to the Company’s success and reputation, allowing Western Digital to distinguish itself in a competitive market. Western Digital’s global Trademark & Brand Protection team focuses on protecting and managing its trademark portfolio and enforcing against unauthorized or improper use of those assets.

This position will play a lead role in the Company’s development and preservation of its worldwide trademark portfolio, and will oversee trademark licensing and brand enforcement for the Company’s brand protection programs in the Americas. The position reports to the head of global Trademarks & Brand Protection.

ESSENTIAL DUTIES AND RESPONSIBILITIES

Trademark Prosecution :

  • 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.
  • 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.
  • Ensure the Company has the right to use its trademarks by maintaining data / information on countries where the Company’s products are distributed.
  • Protect the Company’s right to enforce its brand and trademarks.
  • Oversee procedures for gathering evidence of use of WD trademarks worldwide.
  • Manage outside counsel on worldwide trademark oppositions and cancellations.
  • Promote awareness of the Company’s trademark portfolio and usage guidelines.
  • Maintain trademark usage guidelines for customers.
  • Oversee trademark internal quality control process.
  • Manage and support licensing of WD trademarks.
  • Support trademark review of marketing, advertising, and packaging materials.
  • Support trademark diligence with respect to corporate transactions.
  • Collaborate with internal copyright experts.

Brand Protection :

  • Implement brand protection programs in specific jurisdictions.
  • Manage pre-litigation enforcement activity.
  • Manage criminal and civil pre-litigation activities.
  • Oversee investigations including advising on strategy and drafting documents.
  • Conduct factual research of infringing activity.
  • Collect and preserve evidence of wrongdoing.
  • 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.
  • Collaborate with external partners.
  • Maintain and ensure ethical standards of investigations.
  • Identify and prioritize jurisdictions for enforcement options.
  • Use internal and external digital tools to manage cases.
  • Qualifications :

  • 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.
  • Demonstrated experience as a proactive and strategic trademark and brand protection partner.
  • Ability to communicate legal advice in clear terms.
  • Experience managing a docket for a large global trademark portfolio.
  • Experience handling litigation matters.
  • Familiarity with state and federal legal systems.
  • Strong understanding of trademark laws and enforcement strategies.
  • Ability to work in a fast-paced environment.
  • Excellent communication and interpersonal skills.
  • Additional Information :

    Western Digital is committed to providing equal opportunities to all applicants and employees and will not discriminate against any applicant or employee based on their protected characteristics.

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