Director II, Associate General Counsel - Trademarks and Brand Protection

Company Description

At Western Digital, our vision is to power global innovation and push the boundaries of technology to make what you thought was once impossible, possible.

At our core, Western Digital is a company of problem solvers. People achieve extraordinary things given the right technology. For decades, we’ve been doing just that. Our technology helped people put a man on the moon.

We are a key partner to some of the largest and highest growth organizations in the world. From energizing the most competitive 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.

Binge-watch any shows, use social media or shop online lately? You’ll find Western Digital supporting the storage infrastructure behind many of these platforms. And, that flash memory card that captures and preserves your most precious moments? That’s us, too.

We offer an expansive portfolio of technologies, storage devices and platforms for business and consumers alike. Our data-centric solutions are comprised of the Western Digital®, G-Technology™, SanDisk® and WD® brands.

Today’s exceptional challenges require your unique skills. It’s You & Western Digital. Together, we’re the next BIG thing in data.

Job Description

Western Digital is an industry-leading provider of storage technologies and solutions that enable people to create, leverage, experience and preserve data. Western Digital’s trademarks, logos and slogans are valuable assets that distinguish our products from those of our competitors. 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 role will be responsible for the Company’s strategic development of its worldwide trademark portfolio, oversee trademark licensing and transactional work, and brand enforcement support for the Company’s brand enforcement programs in the Americas and EMEA. The position reports to the Company’s Senior Director responsible global Brand Enforcement and Trademark Prosecution.

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 portfolio. 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 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:

• Develop and manage the Company’s strategy for global trademark preparation, filing and prosecution of trademark applications.
• 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 Examiners to allow the Company to obtain trademark registrations for pending marks. Requires coordination with APAC Trademark/Brand Enforcement attorney 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 global 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 protec