Counsel (Trademark and Copyright) is a specialized practitioner and advisor to all parts of the Pearson business and geographies in providing day-to-day legal support and guidance to stakeholders across marketing/brand, social media, product development, Rights & Permissions, and corporate functions in the area of trademarks, copyrights, domain names and advertising/marketing. This position is responsible for proactively facilitating consistent practices across the IP team and may have some supervisory responsibility over a team of trademark paralegals. Key duties and responsibilities include: managing trademark, copyright and related IP assets of Pearson and its operating units throughout the world and providing strategic legal guidance and counseling with respect to brand strategy and integration, clearance, protection, piracy, infringement and other enforcement, risk mitigation, licensing, litigation and M&A matters. The Counsel will work with other members of the team to develop training and other internal resource materials for the purpose of organizational outreach to educate and guide legal and business teams in connection with the importance of protecting Pearson's intellectual property assets. The Counsel is also responsible for directing outside counsel as needed, evaluating outside counsel spend and practice management, and supporting the budget and reporting process as requested for non-patent IP matters.
This position will supervise and coordinate the workflow of paralegals and other support staff.
REQUIRED KNOWLEDGE AND EXPERIENCE
JD degree from an ABA accredited law school with a strong academic record
Membership, in good standing, in at least one state bar
A minimum of 4+ years of relevant IP legal experience with a demonstrated record of managing large, diverse and global portfolios and handling significant IP transactions, licensing and disputes in a national law firm and/or corporate law department with a reputable trademark and copyright practice (preference given to those who have both in-house and law firm experience in departments specializing in trademark and copyright practice).
Understanding of intellectual property laws and extensive experience in global trademark portfolio management, including clearance, docketing, prosecution and maintenance.
Substantial experience with trademark registration systems, including USPTO, WIPO and country-specific systems and an ability to keep current on changes in laws and regulations impacting intellectual property rights around the world.
An in-depth understanding of legal foundations and principals for international copyright rights, protection and enforcement and experience analyzing and evaluating fundamental doctrines such as fair use/fair dealing, first sale, unfair competition and right of publicity in the context of real-world business operations and activities.
Experience addressing issues related to piracy and counterfeits.
4+ years of experience managing contentious trademark and copyright matters, including drafting and responding to demand letters, domestic and international opposition and cancellation proceedings and related enforcement actions, as well as assisting and collaborating with litigation counsel in infringement actions.
Experience negotiating and drafting trademark and copyright licensing agreements, settlement agreements, concurrent use and settlement agreements, co-branding, and joint marketing agreements, and acquisition and assignment agreements.
Substantial experience in domain names, internet governance, domain policy, domain acquisition and transfer, and domain dispute resolution and recovery proceedings related to gTLD and ccTLD extensions.
Experience drafting and implementing IP related policies, guidelines and processes, such as trademark usage guidelines, licensing policies and best practices, the legal aspects of branding strategy and in-house docket management systems.
Experience with the acquisition and transfer and intellectual property due diligence in corporate M&A transactions
Experience advising and directly supporting marketing, brand and social media professionals and key business stakeholders.
Experience with educational and learning technologies and related products and services preferred.
Experience with Saegis, Corsearch, TrademarkNow, WebTMS, TESS, TEAS and other relevant government filing tools and research tools and databases.
Excellent written and oral communication skills, interpersonal skills and ability to tailor advice to various internal audiences.
Strong analytical abilities and sound legal judgment.
Unwavering ethical standards and professional integrity.
Ability to work collaboratively with cross-functional teams and a diverse range of legal, business, and technology stakeholders in a service driven team.
Demonstrate strong advocacy and negotiation skills.
Ability to perform under pressure to meet short deadlines and manage large, complex legal projects.
Self-motivated and comfortable working independently, with little supervision, in a complex and fast-paced organization with changing needs and priorities.
Flexibility and willingness to become proficient with various administrative and trademark specific platforms and docketing tools used by the company.
Ability to travel periodically (not to exceed 20%).
To perform this job successfully, an individual must be able to perform each essential duty satisfactorily. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.
This person must be able to sit or stand at a personal computer for a reasonable length of time typing and reading.
Ability to handle a high volume of work in a short period of time, handle multiple priorities simultaneously and operate in a demanding work environment is important.
Reliable attendance and punctuality are critical to successful performance in this role.
As required by the Colorado Equal Pay Transparency Act, Pearson provides a reasonable range of minimum compensation for roles that may be hired in Colorado. Actual compensation is influenced by a wide array of factors including but not limited to skill set, level of experience, and specific office location. For the state of Colorado only, the range of starting pay for this role is $90,000 and up. This position is eligible to participate in an annual incentive program, and information on benefits is offered here.
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Pearson is an Affirmative Action and Equal Opportunity Employer and a member of E-Verify. We are committed to building a team that represents a variety of backgrounds, perspectives, and skills. The more inclusive we are, the better our work will be. All employment is decided based on qualifications, merit, and business need.?All qualified applicants will receive consideration for employment without regard to race, ethnicity, color, religion, sex, sexual orientation, gender identity, gender expression, age, national origin, protected veteran status, disability status, or any other group protected by law.
Organization: Corporate Legal
Req ID: 5524