Thermo Fisher Scientific’s Mission is to enable our customers to
make the world healthier, cleaner and safer. Accomplishing that
Mission includes protecting and enforcing the company’s global
trademarks covering its innovative products and technologies.
Thermo Fisher Scientific has an exciting opportunity for
experienced trademark enforcement counsel. This position, which
reports to IP Litigation Lead Counsel, is primarily responsible for
worldwide trademark auditing, monitoring, and enforcement and
managing contested trademark invalidation proceedings.
This role can be based at our sites in Carlsbad, CA (San Diego
area); South San Francisco, CA; Sunnyvale/San Jose, CA; Pittsburgh,
PA; or Waltham, MA (Boston area) where the IP team has critical
mass. Other locations may be possible for exceptional
At Thermo Fisher, we thrive in a culture of learning and
development and are looking for a candidate that can do the same.
This position will allow you flexibility and opportunities for
growth by regularly supporting a variety of projects outside core
trademark responsibilities and collaborating with colleagues
outside the litigation and trademark teams. Success in this role
will require excellent judgment, strong communication skills,
desire to support your colleagues’ success, and a passion for
Manage global trademark monitoring and enforcement, including
collaboration with IP litigation team when necessary.
Establish global programs to identify, monitor and prevent
trademark misuse, infringement and counterfeiting.
Manage rigorous global enforcement of trademark rights,
including cease & desist communications, customs and border office
protection, domain name disputes (e.g., UDRP), and prosecution and
defense of opposition, cancellation and invalidation
Lead strategy on worldwide trademark procurement, registration
and portfolio management, including driving training program for
business partners and establishing coordinated global strategy.
Assess and maximize trademark and brand value in cooperation
with corporate and business brand strategy teams.
Provide pragmatic and actionable counsel on risk analysis and
mitigation strategies for trademarks, trade dress, product designs,
and domain names.
Counsel business stakeholders on trademark value, rights and
protection strategies as well as deals and agreements implicating
Drive continuous improvement in existing trademark practices,
including procurement, policy and training.
Work closely with team of trademark specialists to manage and
optimize value from trademark budget.
Manage work performed by outside service providers, including
Law degree and minimum of 10 years of experience in global
trademark monitoring, enforcement and defense. Experience managing
a global trademark portfolio of an international corporation as
outside or in-house counsel strongly preferred.
A solid record of brand protection, global trademark office
experience and thorough understanding of U.S. and foreign trademark
law and enforcement practices.
Comprehensive experience (1) developing and setting strategies
to identify and resolve trademark infringement, (2) prosecuting
counterfeiters, domain name registrants and trademark squatters,
and (3) training internal stakeholders on best practices for
building and protecting brand value.
Experience conducting online investigations, notice and take
down procedures, and other trademark and brand protection
Experience with domain name portfolio management and enforcement
actions, including UDRP proceedings.
Demonstrated abilities to manage outside counsel, control costs,
and exercise sound business and legal judgment.
Exceptional interpersonal and communication (written and verbal)
skills, strong initiative, results-orientation, collaborative/team
instinct, can-do attitude, and demonstrable history of working
collaboratively and effectively across organizational and
Thermo Fisher Scientific is an EEO/Affirmative Action Employer
and does not discriminate on the basis of race, color, religion,
sex, sexual orientation, gender identity, national origin,
protected veteran status, disability or any other legally protected
To access this job later or share with a friend, please enter
Name and Email Address below.
Get notified for similar jobs Sign up and receive similar job
alerts to your email
Enter Email address
Get customized job recommendations based on your career area of
interest. How would you rate your experience popup
Thermo Fisher Scientific Inc. is the world leader in serving
science, with annual revenue exceeding $25 billion. Our Mission is
to enable our customers to make the world healthier, cleaner and
safer. Whether our customers are accelerating life sciences
research, solving complex analytical challenges, improving patient
diagnostics and therapies or increasing productivity in their
laboratories, we are here to support them. Our global team of more
than 75,000 colleagues delivers an unrivaled combination of
innovative technologies, purchasing convenience and pharmaceutical
services through our industry-leading brands, including Thermo
Scientific, Applied Biosystems, Invitrogen, Fisher Scientific,
Unity Lab Services and Patheon. For more information, please visit
Thermo Fisher Scientific is an Equal Opportunity Employer. All
qualified applicants will receive consideration for employment
without regard to race, creed, religion, color, national or ethnic
origin, citizenship, sex, sexual orientation, gender identity and
expression, genetic information, veteran status, age or disability