Trademark & Marketing Counsel - Temp

Trademark & Marketing Counsel

An excellent career opportunity is currently available for a trademark attorney to join the Global IP Team at Tenneco LLC.  We are seeking qualified candidates to provide hands-on legal advice and perform a broad range of legal tasks in the areas of trademark, copyright, and marketing law. 

Job Summary

The successful candidate will report to the Vice President & Chief IP Counsel and be a valued member of the Global IP Team, with team members in the USA, Sweden, Germany, Poland, and China focusing on IP asset creation and management, IP risk management, legal counseling, and value extraction.  The position will working closely with sales, marketing, engineering, and product management  globally to provide legal support on trademark, copyright, and related licensing matters including the registration, use and exploitation of our global trademark portfolio of over 8,000 assets in more than 180 jurisdictions to ensure that Tenneco successfully protects the identity and integrity of its more than 50 brands, of which at least 15 are more than 100 years old.  This position will also provide marketing and advertising support including on issues related to social media.

Responsibilities

• Collaborate outside counsel in the prosecution and enforcement of trademarks worldwide.
• Manage and conduct trademark searches, clearances, oppositions, cancellations, invalidations.
• File and prosecute trademark applications in collaboration with our Global Trademark Portfolio Manager.
• Work with our Brand Protection Manager on counterfeit matters and customs recordation.
• Negotiate, draft, and review licensing, co-existence and other trademark related agreements with customers, suppliers, service providers and third parties.
• Advise on IP-related contract enforcement, contract disputes, supplier quality matters and contract terminations and transitions.
• Negotiate, draft and review marketing agreements, sponsorship agreements, agency agreements, services agreements and event agreements, among others.
• Pre-publication collateral review; advise as to domains, e-commerce and social media.
• Advise on rights of privacy/publicity and unfair competition law.
• Support IP issues in M&A assessments and negotiations.
• Assist with IP litigation.

Critical Success Factors

• Good Judgment: Demonstrate expertise and sound judgment, understand how assigned responsibilities support Tenneco’s business objectives, and be able to provide practical, risk-balanced advice based upon a thorough understanding of the scope of an issue, taking full advantage of internal networks and external intelligence.
• Collaboration: Firm understanding of available legal, functional, and business resources and ability to integrate information from a number of sources to achieve business results, including breaking down boundaries to create alignment as necessary, in a complex, global, matrixed environment. Able to work as part of a team and being good at leading and supporting others who are leading depending on the situation.
• Anticipation: Holistic, big picture thinker, who anticipates changes in law, enforcement, and/or business objectives and adapts approach as necessary to manage risks effectively and mitigate issues before they arise. Creative thought process, and able to use a start-up mindset in a larger corporate environment.
• Influencing Skills: Build strong relationships with business partners to tactfully influence and gain their support to drive desired outcomes. Be invested in the business you support.

Minimum Qualifications

• JD from an accredited law school.
• Active member of a state bar in good standing.
• At least 15 years trademark experience in areas such as filing and prosecution, portfolio management, clearance searching and licensing and enforcement with a law firm or in-house law department.
• Excellent oral and written communication and advocacy skills.
• Strong interpersonal skills, including the ability to establish effective working relationships with senior management.
• Hard working, well organized and able to manage numerous projects simultaneously under deadline pressure.
• Commitment to professionalism and collegiality.

Preferred Qualifications

• Experience in:
  • Advertising and Marketing law
  • Litigation
  • Automotive  Original Equipment and/or Aftermarket
  • Training personnel on trademarks and advertising basics and best practices
• Proficiency in Anaqua and Legal Tracker