Director and Senior Legal Counsel, Trademarks and Brand Protection

Western Digital Director and Senior Legal Counsel, Trademarks and Brand Protection Helena, Montana Apply Now 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 DescriptionJob 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 RESPONSIBILITIESTrademark 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, including attendance at key marketing, product development, and kickoff meetings.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 to obtain trademark registrations for pending marks.Ensure the Company has the right to use its trademarks by maintaining and understanding data / information on countries where the Company’s products are distributed, sold, and serviced.Protect the Company’s right to enforce its brand and trademarks by maintaining data / information on countries where the Company faces counterfeit or infringement risks.Oversee procedures for gathering evidence of use of WD trademarks worldwide to maintain validity of WD trademarks.Maintain understanding and knowledge of WD products and services.Manage outside counsel on worldwide trademark oppositions and cancellations to protect enforcement rights / avoid brand dilution.Promote awareness of the Company’s trademark portfolio and usage guidelines by training employees and authorized third parties.Collaborate with other regional brand protection leads to establish a strategy and evidence for expanding well-known status of WD trademarks.Maintain trademark usage guidelines for customers to protect the Company’s trademark rights.Oversee trademark internal quality control process.Manage and support licensing of WD trademarks, including advising on trademark license provisions.Support trademark review of all forms of marketing, advertising, and packaging materials compliance with the Company’s trademark usage guidelines.Support trademark diligence with respect to corporate transactions.Collaborate with internal copyright experts to determine strategy for obtaining copyright protection for the Company’s logos.Brand ProtectionImplement brand protection programs in specific jurisdictions within the construct of the global company strategy.Manage pre-litigation enforcement activity including cease and desist letters, notice and takedown requests, and negotiating settlements.Manage criminal and civil pre-litigation activities and work with local counsel on strategies for filing and managing cases.Oversee investigations including advising on strategy, drafting documents, and compiling and presenting data.Conduct factual research of infringing activity, including orchestrating test buys and identifying counterfeit products.Collect and preserve evidence of wrongdoing to maintain availability of all enforcement options.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 such as outside counsel and law enforcement agencies.Maintain and ensure ethical standards and professional conduct of internal and external investigations.Identify and prioritize jurisdictions for new enforcement options and implement them.Use internal and external digital tools to effectively manage cases and measure return on brand protection and enforcement activity.QualificationsJ.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, including experience in trademark prosecution / counseling / strategy.Demonstrated experience as a proactive and strategic trademark and brand protection partner to internal business teams.Ability to communicate legal advice and risk mitigation strategies in clear terms to internal clients.Experience managing a docket for a large global trademark portfolio, including conducting global clearances.Experience handling litigation matters, including evidence preparation and preservation.Familiarity with state and federal criminal and civil legal systems; knowledge of foreign jurisdictions desirable.Strong understanding of trademark laws and enforcement strategies available in foreign jurisdictions.Strong interest in understanding and working with technology products.Ability to work in a fast-paced environment and manage multiple projects.Excellent communication and interpersonal skills.Additional InformationWestern 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. Our non-discrimination policy applies to all aspects of employment.#J-18808-Ljbffr