Director and Senior Legal Counsel, Trademarks and Brand Protection

Company Description

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.

When you join Western Digital, you join a legacy more than 50 years in the making. Across our Western Digital®, SanDisk®, SanDisk® Professional, WD® and WD_BLACK™ brands, we have brought some of the most storied advancements in memory and data storage technology to market—and our best, most innovative work is yet to come.

From energizing gaming platforms, to enabling systems to make cities safer and cars smarter and more connected, to powering the data centers behind many of the world’s biggest companies and public cloud, Western Digital is fueling a brighter, smarter future.

Here’s how you can help.

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