INTELLECTUAL PROPERTY ATTORNEY
Responsibilities Include:
• Review and manage trademark clearance searches. Register Perry Ellis’ trademarks in the U.S. and throughout the world.
• Police trademark infringement on a global basis and manage contested matters related to trademarks and domain names.
• Provide legal counsel to corporate marketing, product development team members and others throughout the company regarding trademark issues.
• Provide legal counsel on trademark intermediary liability issues, including developing removal policies, advising on removal requests and counseling product teams.
• Reviews outside counsel work to ensure the work, methodology, and costs meet expectations.
• Provides trademark clearance searches and opinions and offer recommendations on risk mitigation and potential conflicts.
• Monitors and protects the company's trademarks, including drafting cease and desist letters and investigating infringement.
• Drafts and negotiates licenses, settlements or coexistence agreements.
• Investigates domain name infringement issues and determines take down actions.
• Draft and negotiate licensing and distribution agreements (globally); therefore, requires a broad understanding and appreciation for nuances of international trademark, licensing, tax, sourcing, and other laws that may impact our rights globally.
• Conducts IP related diligence or companies and/or third party intellectual property portfolios for possible acquisition or licensing analysis.
Minimum qualifications:
• JD degree or equivalent
• 3 years of experience practicing trademark law
• Must be admitted to the bar in which position is located and in good standing or otherwise authorized to practice law (e.g., have registered in-house status) in the state in which the position is located.
Preferred qualifications:
• Strong interpersonal and team skills and sense of humor.
• Good business judgment, hardworking, well-organized and able to manage numerous projects simultaneously under deadline pressure.
• Commitment to professionalism and to client service.
• Experience and interest in working on intermediary liability issues.
• A mix of both in-house and firm experience
• Experience as a (registered) patent attorney is also highly desirable (but not critical) to assist with implementing and supporting a R&D and design patent program with our teams and processes in US & Asia.
If you are interested in the above position, please submit your resume directly to General Counsel Tricia Thompkins at tricia.thompkins@pery.com.