Counsel, Intellectual Property – Trademarks, Copyrights, Designs – Stamford, CT


Be a part of a revolutionary change

At PMI, we’ve chosen to do something incredible. We’re totally transforming our business and building our future on one clear purpose – to deliver a smoke-free future.
With huge change, comes huge opportunity. So, wherever you join us, you’ll enjoy the freedom to dream up and deliver better, brighter solutions and the space to move your career forward in endlessly different directions.

Our success depends on people who are committed to our purpose and have an appetite for progress.

We are excited that our US headquarters in NYC has moved to Stamford, Connecticut as of November 2022. Our beautiful new location is just steps away from the Stamford Metro-North Train Station and easily accessible from NYC.

Your ‘day to day’:

PMI’s Trademarks, Copyrights and Designs group is spread over three locations around the world: London, Stamford, CT, and Hong Kong. We pro-actively do risk-assessments, as well as protect and enforce our company’s trademarks, designs, and copyrights – and also provide the Phillip Morris business with IP advisory and domain name related services. You will join the part of the team based in Stamford, CT at our HQ and Americas region offices.

• Support our global reduced risk product brands, wellness and life science brands and other central functions such as Global Communications, PMI Products, PMI Science and Innovation, and PMI People and Culture when required; from time to time, there will also opportunities to be involved in IP enforcement, litigation, and transactional projects.
• Working closely with internal clients and outside counsel to review and clear new pack designs, marketing material, innovations, main brands, sub-brands, product features, slogans, and logos - including conducting online searches and reviewing and reporting full availability searches.
• Trademark portfolio management: managing and prosecuting our trademark portfolio – including handling significant registry objections, especially in the Americas region, such as non-distinctiveness and relative grounds objections.
• Actively running disputes: contentious matters before trademark registries (active and passive oppositions and cancellations), including, drafting, and reviewing demand letters, managing TTAB proceedings, UDRP proceedings and court proceedings (infringement and cancellation actions).
• Advising the business on its day-to-day trademark, design, and copyright queries – including the IP clauses of agreements.
• Supporting the business in relation to other IP related projects, such as licenses and assignments, transactions (legal due diligence and drafting transaction agreements), trademark portfolio audits, copyright, and domain name matters.
• Providing IP compliance training and advice to market lawyers and marketing teams.
  

Building Relationships and Using Influence

• Demonstrates outstanding communications skills, including presenting to, advising, and educating executive leadership as well as engaging with external stakeholders.
• Possesses the gravitas and executive presence to be effective with the executive team of a sophisticated multinational public company.
• Able to convey complicated topics and issues in a straightforward and concise manner, and to tailor communication style to different audiences.
• Maintains established relationships with external legal resources characterized by credibility, respect, trust.
• Develops and maintains a strong network of relationships inside and outside the organization to support the objectives of the Board, CEO, and the business.
• Demonstrates integrity and commitment to the highest ethical standards and personal values.

Who we’re looking for:

• J.D. or equivalent and qualification as an attorney in at least one jurisdiction, with admission to the CT bar or ability to register as inhouse counsel with the CT bar.
• Experience in trademark portfolio management and prosecution, including search opinions, trademark prosecution.
• Experience of advising on trademark, copyright, and designs matters, including enforcement / complex contentious matters.
• Confidence in providing complex legal opinions and risk analysis, including trademark infringement assessments.
• Excellent written communication skills.
• Excellent English language, interpersonal and business counselling skills, Spanish language knowledge is a plus.
• Previous experience with life sciences or technology industry preferred.
• Demonstrated track record of success in leading high-performance teams.
• Ability to work in a fast-paced environment, handle multiple, conflicting priorities while managing a substantial workload and client expectations.
• Experience of working successfully in a highly results-oriented and performance-driven environment with a focus on excellence.
• Robust interpersonal, networking, public speaking, and writing skills, with the confidence and credibility to act quickly, communicate effectively with diplomacy and civility, and command respect of both internal and external audiences.
• Ability to oversee complex projects and lead them to successful completion in an organized, efficient, and effective manner.
• Ability to travel as necessary.
• Legally authorized to work in the U.S.

Annual Base Salary Range: $125,000 - $200,000



What we offer

• We offer a competitive base salary, annual bonus (applicable based on level of position), great medical, dental and vision coverage, 401k with a generous company match, incredible wellness benefits, commuter benefits, pet insurance, generous PTO, and much more!
• We have implemented Smart Work, a hybrid model of working that promotes flexibility in the workplace.
• Seize the freedom to define your future and ours. We’ll empower you to take risks, experiment and explore.
• Be part of an inclusive, diverse culture where everyone’s contribution is respected; Collaborate with some of the world’s best people and feel like you belong.
• Pursue your ambitions and develop your skills with a global business – our staggering size and scale provides endless opportunities to progress.
• Take pride in delivering our promise to society: To improve the lives of a billion smokers.
  

PMI is an Equal Opportunity Employer
PMI Global Services Inc. and PM Global Brands Inc. are a subsidiary of Philip Morris International Inc. Philip Morris International (PMI) is leading a transformation in the tobacco industry to create a smoke-free future and ultimately replace cigarettes with smoke-free products to the benefit of adults who would otherwise continue to smoke, society, the company, its shareholders, and its other stakeholders. PMI is a leading international tobacco company engaged in the manufacture and sale of cigarettes, as well as smoke-free products, associated electronic devices and accessories, and other nicotine-containing products in markets outside the U.S. In addition, PMI ships versions of its IQOS Platform 1 device and consumables to Altria Group, Inc. for sale under license in the U.S., where these products have received marketing authorizations from the U.S. Food and Drug Administration (FDA) under the premarket tobacco product application (PMTA) pathway; the FDA has also authorized the marketing of a version of IQOS and its consumables as a Modified Risk Tobacco Product (MRTP), finding that an exposure modification order for these products is appropriate to promote the public health. PMI is building a future on a new category of smoke-free products that, while not risk-free, are a much better choice than continuing to smoke. Through multidisciplinary capabilities in product development, state-of-the-art facilities and scientific substantiation, PMI aims to ensure that its smoke-free products meet adult consumer preferences and rigorous regulatory requirements. PMI's smoke-free product portfolio includes heat-not-burn and nicotine-containing vapor products. As of September 30, 2022, PMI's smoke-free products are available for sale in 70 markets in key cities or nationwide, and PMI estimates that approximately 13.5 million adults around the world, excluding Russia and Ukraine have already switched to IQOS and stopped smoking. For more information, please visit www.pmi.com and www.pmiscience.com.

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