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Trademark Attorney

As a Trademark Attorney, 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 Head of Trademark and Brand Protection in Schneider Electric.

Roles & Responsibilities:


* Overseeing and managing global trademark portfolios for various lines of business in collaboration with the team


* Manage trademark filing, prosecution, and maintenance actions


* Review office actions and provide appropriate response strategies to internal business clients


* 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

Minimum Requirements:


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


* Masters or Advanced degree in intellectual property law


* Qualified professional representative under local national qualification system


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


* Fluency/proficiency in English (oral & written)

Preferred Skills & Competencies:


* Qualified, or part-qualified, professional representative before the local Intellectual Property Office


* Prior in-house experience preferred


* Demonstrate ability to direct and manage external counsel and agents


* Excellent written and oral communication skills


* Strong organizational, prioritization, and time management skills with a focus on responsibility and reliability


* Exceptional attention to detail and ability to communicate clear...




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