Trademark Attorney M/F

Environment:

As a Trademark Attorney in our European office, 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 Director of Trademark and Brand Protection in Schneider Electric.

Your role:

This role will focus on trademark portfolio strategy, development and management, including:


* Overseeing and managing global trademark portfolios for various lines of business


* Manage trademark filing, prosecution, and maintenance actions


* Review office actions and provide appropriate response strategies


* 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


* Liaising 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

You have:


* At least 3+ years' experience in the field of intellectual property in managing trademark portfolios


* Masters or Advanced degree in intellectual property law;


* Knowledge (relative to experience) of laws and practices under the Paris Convention and Madrid Protocol;


* Fluency/proficiency in English (oral & written)

You are:


* Qualified, or part-qualified, professional representative before the European Union Intellectual Property Office (EUIPO) and French Trademark Office (INPI);


* Qualified professional representative under local national qualification system;


* Prior in-house experience preferred but not required


* Demonstrate ability to direct and manage external counsel and agents;


* Fluency/proficiency in French (oral & written)

Skills & Abilities


* Excellent written and oral communication skills


* Strong organ...