Division Counsel, Global Trademarks

Abbott is a global healthcare leader that helps people live more fully at all stages of life. Our portfolio of life-changing technologies spans the spectrum of healthcare, with leading businesses and products in diagnostics, medical devices, nutritionals and branded generic medicines. Our 114,000 colleagues serve people in more than 160 countries.

     

JOB DESCRIPTION:

Division Counsel, Global Trademarks

Job Description

Abbott is seeking an experienced trademark attorney to lead our global trademark team and be part of an innovative group dedicated to elevating trademark practice to best align with Abbott’s cutting-edge diverse businesses that bring life-changing technology to people all over the world.  The candidate will work closely with Abbott businesses to create and execute on brand strategies and will work around the world to protect Abbott trademarks from infringement. This position can be based in Abbott Park, Illinois, or Chicago, Illinois.

CORE RESPONSIBILITIES:

The successful candidate must possess strong knowledge of global trademark law, including clearance, prosecution, enforcement, and contractual work. The candidate must also have experience in adjacent areas including trade dress, copyright, unfair competition, and social media. Key additional responsibilities include:

• Collaborating with cross-functional teams, including marketing, regulatory, and other senior management business teams, to develop global, regional, and local trademark/brand strategy based on business objectives
• Managing trademark oppositions, cancellations, and litigation around the world; managing outside counsel in those actions
• Resolving trademark disputes using negotiation skills, judgment, creativity, and legal expertise, including pre-litigation dispute resolution and settlements
• Reviewing and analyzing trademark watch notices to assess threat to Abbott businesses and develop strategy to combat confusingly similar applications
• Reviewing and analyzing search results from jurisdictions all over the world, and conveying results of such analyses to the business in a clear way
• Preparing trademark applications and other prosecution documents for filing; monitoring and maintaining applications through registration
• Functionally supports complex transactions of the business, including due diligence and contract review in close interaction with Abbott’s Divisional and regional Legal & Patent teams
• Experience in managing personnel at all levels, including attorneys and support staff
• Helping select and/or directing the work of outside counsel, defining project objectives, managing projects, and monitoring outside counsel operations within budget.

MINIMUM QUALIFICATIONS:

• Law degree from an accredited law school, demonstrate a strong academic background
• 10+ years of trademark experience in a law firm or corporate legal environment (with 5 years minimum in-house experience)
• Experience successfully representing and managing the legal affairs of a business having international operations
• Must be able to move easily between a hands-on, operations-focused view and a strategic outlook
• Knowledge and experience working across different cultures

PREFERRED QUALIFICATIONS:

• Ability to work in a highly matrixed and geographically diverse business model including flexibility to work with different time zones where appropriate
• Ability to build collaborative relationships with leaders and co-workers at all levels
• Ability to travel domestically and internationally when appropriate (approximately 10%)

CRITICAL SUCCESS FACTORS:

• Good Judgment:  Demonstrate expertise and sound judgment, understand how assigned responsibilities support Abbott’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; successful leadership and support of others on the team.
• Anticipation:  Holistic, big picture thinker, who anticipates changes in law, enforcement, and/or business objectives and adapts approach as necessary to manage risks effectively. Creative thought process, and able to use a start-up mindset in a larger corporate environment.
• Influencing Skills:  Build strong relat