• Senior IP Counsel

    Job Locations US-MA-Waltham
    Brand/Group
    Corporate
    Job Function
    Legal
    Min. Exp.(Yrs)
    10
    Type
    Full Time
  • General Function

    Logo

     

    Wolverine Worldwide is a global marketer of branded footwear, apparel, and accessories. With an established global footprint that spans approximately 200 countries and territories, as well as a rock-solid infrastructure, Wolverine Worldwide is dedicated to advancing the following brands that comprise the ever-expanding portfolio: Bates, Chaco, Cat Footwear, Harley Davidson Footwear, Hush Puppies, Keds, Merrell, Saucony, Sperry, and Wolverine. Wolverine Worldwide’s continued success is driven by our ability to stay true to our simple mission: we empower, engage and inspire our consumers – every step of the way.

     

    The Senior Intellectual Property Counsel is a new position and represents an opportunity for a uniquely qualified candidate to serve as the Company’s first in-house IP specialist. This position will have primary responsibility for all intellectual property matters on a company-wide basis and will be based in Waltham, Massachusetts.  This position will serve as a key member of the legal department, and will report to an Associate General Counsel in the Company’s Rockford, Michigan headquarters.  This counsel will join an incumbent team consisting of a Senior IP Manager based in Rockford and a paralegal based in Waltham.

    Primary Duties

    • Serve as legal advisor to all the Company’s brands on IP-related risks, opportunities and needs.
    • Support/collaborate with other in-house counsel on IP-related matters.
    • Advise on IP disputes and litigation and the enforcement of the Company’s IP rights.
    • Assist product development teams across the Company in development, protection and risk avoidance in Spring and Fall seasonal product lines.
    • Develop internal programs and provide training to protect IP and accomplish business goals.
    • Review, draft, negotiate and advise on a broad range of IP-related agreements, including license, collaboration, co-branding, co-existence and non-disclosure agreements.
    • Advise on administration of the company’s inbound and outbound license agreements.
    • Work with IP Manager and outside counsel to ensure the registration, prosecution, and renewals of the company’s 5,000+ global trademarks.
    • Develop existing anti-counterfeit program in line with brands’ continued growth.
    • Manage outside patent counsel and supervise development and maintenance of the Company’s patent portfolio.
    • Oversee the maintenance of the Company’s domain name portfolio.
    • Provide advice on IP aspects of advertising and promotional activities, including activities associated with ecommerce and social media.
    • Provide advice on and assist in IP-related aspects of acquisitions and divestitures, including reviewing, drafting, negotiating and advising on IP-related provisions of corporate acquisitions and divestitures in the US and abroad.
    • Serve as a mutual gateway between the Waltham-based business and the Legal Department in Rockford on non-IP-related legal needs.
    • Travel regularly to the Rockford campus to meet with the Rockford-based Brands and Legal Department colleagues.
    • Perform duties consistent with the Company’s AAP/EEO goals and policies.
    • Perform other duties as required/assigned by manager.

    Knowledge, Skills and Abilities Required

    • Juris Doctorate (JD) from accredited and nationally recognized law school.
    • Bar admission and good standing in at least one state (preferably Massachusetts).
    • 7-10 years of legal experience with several years in a top-tier national or international firm, as well as in-house legal department of multinational corporation.
    • Broad knowledge of IP matters.
    • Ideal candidate will have expertise in trademark transactional matters, including licensing and corporate transactions, combined with a strong understanding of trademark prosecution and enforcement in the US and abroad.
    • General understanding of patent law with the ability to manage and coordinate patent prosecution and enforcement efforts.
    • Experienced with IP aspects of advertising and promotional activities, including print, ecommerce and social media.
    • Experience in commercial transactions and M&A.
    • Excellent negotiating and drafting skills.

       

      WORKING CONDITIONS

      Normal office environment. Regular travel required.

      The above statements are intended to describe the general nature and level of work being performed and are not intended to be an exhaustive list of all responsibilities, duties and skills which may be required.

    Committed to a diverse workforce, we are an Equal Opportunity Employer (Minorities/Women/Veterans/Disabled).

    AM17

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