Director and Senior Legal Counsel, Trademarks and Brand Protection

Director and Senior Legal Counsel, Trademarks and Brand Protection

• Full-time
• Job Type (exemption status): Exempt position
• Salary Range: 180,625.00-255,800.00
• Business Function: Legal
• Location (Secondary): Irvine Office--LOC_WDT_USCA01

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.

Here’s how you can help.

Job Summary:

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.

For trademark prosecution, responsibilities include working with business teams and outside counsel to create and implement a strategic framework for developing, maintaining and controlling use of the Company’s trademark assets. Additionally, this attorney is expected to know and learn developments in trademark prosecution rules/laws and advise on strategic trademark and brand initiatives globally.

For brand protection, this role will support strategy and implementation of online and offline brand protection programs in the Americas to remove counterfeit or unauthorized products from retail and supply channels to protect and enhance the Western Digital brands.

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 and risks of adoption for proposed new marks.
• 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.

Brand Protection

• Implement brand protection programs in specific jurisdictions.
• Manage pre-litigation enforcement activity including cease and desist letters and notice and takedown requests.
• Manage criminal and civil pre-litigation activities.
• Oversee investigations and advise on strategy.
• Conduct factual research of infringing activity.
• Collect and preserve evidence of wrongdoing.

Minimum 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.
• Excellent communication and interpersonal skills.

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 race, color, ancestry, religion, sex, gender, age, national origin, sexual orientation, medical condition, marital status, physical or mental disability, or other legally protected characteristics.