Director and Senior Legal Counsel

Job Description

Job Summary:

Western Digital’s trademarks, designs, logos and slogans are valuable assets that are vital to the Company’s success and reputation, allowing Western Digital to distinguish itself in a competitive market.  Western Digital’s global Trademark & Brand Protection team focuses on protecting and managing its trademark portfolio and enforcing against unauthorized or improper use of those assets. 

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, including attendance at key marketing, product development and kickoff meetings.
  • Advise internal clients on trademark clearance results, risks of adoption for proposed new marks, and measures to mitigate risk.
  • Register new marks (classes, description of goods/services) using clear criteria for registration of marks.
  • Respond to office actions issued by global trademark registries to allow the Company to obtain trademark registrations for pending marks. Requires coordination with APAC and EMEAI trademark attorneys to ensure consistent arguments.
  • Ensure the Company has the right to use its trademarks by maintaining and understanding data/information on countries where the Company’s products are distributed, sold and serviced.
  • Protect the Company’s right to enforce its brand and trademarks by maintaining data/information on countries where the Company faces counterfeit or infringement risks.
• Oversee procedures for gathering evidence of use of WD trademarks worldwide to maintain validity of WD trademarks.
• Maintain understanding and knowledge of WD products and services.
• Manage outside counsel on worldwide trademark oppositions and cancellations to protect enforcement rights/ avoid brand dilution. 
• Promote awareness of the Company’s trademark portfolio and usage guidelines by training employees and authorized third parties (e.g., marketing firms, social media firms, promoters).
• Collaborate with other regional brand protection leads to establish a strategy and evidence for expanding well-known status of WD trademarks.
• Maintain trademark usage guidelines for customers (e.g., distributors, retailers) to protect the Company’s trademark rights and to help avoid brand dilution.
• Oversee trademark internal quality control process.
• Manage and support licensing of WD trademarks, including advising on trademark license provisions in the context of agreements with partners.
• Support trademark review of all forms of marketing, advertising and packaging materials compliance with the Company’s trademark usage guidelines.
• Support trademark diligence with respect to corporate transactions.
• Collaborate with internal copyright experts to determine strategy for obtaining copyright protection for the Company’s logos.

Brand Protection

• Implement brand protection programs in specific jurisdictions within the construct of the global company strategy.
• Manage pre-litigation enforcement activity including cease and desist letters, notice and takedown requests, commercial correspondence, and negotiating settlements.
• Manage criminal and civil pre-litigation activities, such as raids and investigations, and work with local counsel on strategies for filing and managing to conclusion criminal and civil cases.
• Oversee investigations including advising on strategy, drafting documents, interviewing internal witnesses and experts, compiling and presenting data, and authenticating products as part of pre-litigation and litigation enforcement activities.
• Conduct factual research of infringing activity, including orchestrating test buys, identifying illicit behavior, identifying counterfeit products, and performing or coordinating further product testing and analysis.
• Collect and preserve evidence of wrongdoing to maintain availability of all enforcement options.
• Review and support the maintenance of the Company’s domain name portfolio, and work with internal and external partners to protect and enforce the Company’s brands in domain name and cybersquatting proceedings.
• Partner with internal and external teams to identify new targets and fraudulent activities.
• Collaborate with external partners such as outside counsel, customs authorities, and state and federal law enforcement agencies.
• Maintain and ensure ethical standards and professional conduct of internal and external investigations.
• Identify and prioritize jurisdictions for new enforcement options and implement them.
• Use internal and external digital tools to effectively manage cases, report results, and measure return on brand protection and enforcement activity.

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, including experience in trademark prosecution/counseling/strategy, trademark litigation and brand enforcement with 4 years of experience at a top tier law firm and 3 or more years of experience in-house preferred. 
• Demonstrated experience as a proactive and strategic trademark and brand protection partner to internal business teams.
• Ability to communicate legal advice and risk mitigation strategies in clear and understandable terms to internal clients that demonstrates an understanding of the business and business processes.
• Experience managing a docket for a large global trademark portfolio, including conducting global clearances.
• Experience handling litigation matters, including evidence preparation and preservation and managing case deadlines.
• Experience handling external investigations in the context of litigation desired.  
• Familiarity with state and federal criminal and civil legal systems; knowledge of foreign jurisdictions desirable.
• Strong understanding of trademark laws of and enforcement strategies available in foreign jurisdictions.
• Knowledge and ability to identify, handle and advise on complex issues in many disciplines, with particular expertise in trademark law and intellectual property.
• Strong interest in understanding and working with technology products.
• Ability to work in a fast-paced environment, effectively handle shifting priorities and manage and prioritize multiple projects.
• Has a customer service focus and works collaboratively with internal partners and has an ability to work effectively with colleagues around the world.
• Excellent communication and interpersonal skills with the ability to communicate effectively at all levels of the company.