Senior Intellectual Property (IP) Counsel

Short Intro and About the Job

We are currently looking to hire a Senior Intellectual Property (IP) Counsel based in Broomfield, CO or White Plains, NY! Our Legal & Regulatory teams monitor legal and regulatory changes and provide strategic guidance. This role focuses on managing our intellectual property portfolio and advising our business on questions related to intellectual property. By joining this team, you will work with colleagues across Danone on everything from contracts to food science. You will assess the risks, evaluate effects, and propose sustainable solutions that have a positive impact.

In this role, you will be responsible for:

• Conducting and reviewing trademark clearance searches and provide recommendations and advice to marketing and creative teams regarding infringement risks, registrability and risk mitigation strategies.
• Effectively and efficiently managing the prosecution of our domestic trademark portfolio in-house, including determining filing strategy, and completing all routine prosecution and maintenance filings.
• Managing trademark enforcement in-house including drafting and sending cease and desist letters, litigating TTAB proceedings, negotiating settlements, and overseeing outside counsel as needed.
• Providing legal guidance to marketing & brand teams and management concerning intellectual property strategy, procurement, licensing, and disputes with a focus on trademark, copyright, design patents, and trade dress issues both domestically and globally.
• Reviewing and advising on company advertising and branding materials, packaging, and communications with respect to IP use and risks.
• Coordinating with the companys global IP team and oversee outside counsel as needed on international trademark prosecution, oppositions, and cancellation actions.
• Reviewing, drafting, and negotiating contractual agreements, including license agreements, co-existence agreements, joint promotion agreements, material transfer agreements, co-development agreements and non-disclosure agreements and providing advice and support on IP provisions on a wide range of contracts as needed.
• Leading Legal oversight and management of the Companys licensing strategy and relationships.
• Creating and implementing processes, guidelines, and trainings related to IP matters to promote efficiency and compliance.
• Providing guidance and support to the Research & Innovation team, managing certain intellectual property matters and challenges that pertain to ingredient procurement, product development and innovation pipelines.
• Partnering with brands, Information Security and Information Technology, and Global teams to protect domain names including negotiating acquisition of registered domains via negotiation, managing Uniform Domain-Name Dispute Resolution proceedings and litigation.
• Liaising with the Global IP team to ensure consistency in approach & align with global strategy and communicate same to business.
• Providing guidance to the Global team with respect to product innovations, developments and strategic innovation partnerships conducted pursuant to US law.
• Providing litigation support to our Associate General Counsel Litigation on relevant litigations and challenges.

This role will directly manage a paralegal and will report directly to the Associate General Counsel - Marketing.

About You

• You have a JD from an accredited law school
• You have 8+ years of experience in a law firm or in-house role focusing on intellectual property matters
• You are willing to occasionally travel as required for the role
• You are able to identify legal issues quickly and effectively communicate sound, understandable legal recommendations to the business
• You possess strong work ethic, have a hands on mentality, take ownership of work product, and have the ability to work in an extremely fast paced environment on a collaborative legal team.
• You are
  • creative and exhibit business savvy
  • highly organized and detailed oriented
  • competent to take on complex legal issues and projects autonomously
  • capable of changing focus quickly to respond to varied business needs
• You have
  • strong oral communication skills
  • strong interpersonal skills
  • strong negotiation skills

The base compensation range for this position is $155,000 to $210,000, commensurate with experience. Danone North America additionally offers a performance-based bonus and has a strong benefits package including Medical, Dental, Vision, Prescription Drug Coverage, 401k Plan, Wellness Program, Life Insurance, Tuition Reimbursement, Flexible Time Off, and Paid Parental Bonding Leave, among other benefit plan options. To give our employees flexibility, Danone is a hybrid work environment with opportunities to work both remotely and in office when desired.

About Us, We offer and What's next

At Danone North America, youll work with some of the best-known food and beverage brands in the world like Activia, Silk, Horizon Organic, Two Good, Oikos, evian, and Happy Family. Youll be part of one of the largest Certified B Corps in the world, working together to make sure our brands create real benefits for people, communities, and the planet. We have 6,000+ employees across the U.S. and Canada. Come join our movement for a healthier world: One Planet. One Health BY YOU.

Danone North America doesnt just welcome what makes you unique, we value it. Were proud to be an equal opportunity and affirmative action employer. All hires to our team are based on qualifications, merit and business needs. We recruit, employ, train and promote regardless of race, color, religion, disability, sex, sexual orientation, gender identity, national origin, age, veteran status, genetic characteristic or any other protected status. Faithful to our values of openness and humanism, all of our employees share in the commitment to engage one another with dignity and respect. http://www.dol.gov/ofccp/regs/compliance/posters/pdf/eeopost.pdf

https://www.dol.gov/ofccp/regs/compliance/posters/pdf/OFCCP_EEO_Supplement_Final_JRF_QA_508c.pdf