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Trademark Counsel

Company name

Atlanta, GA

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Closing On: 22/05/2018

Trademark Counsel


Americas, USA, Georgia, Atlanta

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Schedule Type

Full Time

Job Description

Supports Smiths divisions by providing hands-on, high proficiency trademark analysis and advice including trademark clearance and registrability opinions. Obtains trademark protection where appropriate for Smiths products worldwide. Manages trademark renewal process.

Be an integral part of the marketing process, providing trademark advice and guidance.

* Become familiar with the main product lines of Smiths divisions.

* Conduct trademark clearance searches internally or using out-sourced search providers and provide commercially relevant analysis of the results.

* Implement and review trademark watches for new trademark applications filed worldwide by third parties. Where appropriate file oppositions to relevant applications or negotiate with applicants to restrict cover.

* Implement internal lists of trademarks used by the divisions for use by our marketing and labelling people to give guidance about how marks should be used in literature and on packaging.

* Draft and prosecute trademark applications internally or work with trademark law firms to obtain trademark protection.

* Manage the transfer of trademark renewals from existing attorneys to a single renewal agency.

* Provide patent, design and copyright support as needed.

* Provide intellectual property trainings as needed.

Duties and Responsibilities

* Ensures the divisions have the appropriate level of trademark resource to support planned budgeted programs to prevent capacity constraints causing delays in these projects.

* Manages the trademark renewal process.

* Budgets, tracks and reports trademark-related expenses.

* Assists as needed with Legal Department initiatives including trademark enforcement and defense to allegations of infringement.

Required Skills and Experience

* Strong expertise in trademark filing requirements, prosecution, and law.

* Solid knowledge of USPTO and EUIPO rules, formalities, and applicable case law.

* Detail oriented and organized.

* Software knowledge: MS Word, Excel, trademark searching database software.

* At least seven years of trademark law experience in-house, in a law firm, and/or in a solo practitioner setting.

* Licensed trademark attorney admitted in the country in which practicing.

About Us

At Smiths Medical, we are passionate about improving and saving the lives of patients through high quality, innovative medical devices and services. We are a leading global manufacturer of specialty medical devices that provides innovative and lifesaving solutions for the worlds healthcare markets.

Specializing in Infusion Therapy, Vascular Access, Vital Care, and Specialty Products & Services, our products are found in hospital, emergency, home and specialty care environments and are used during critical and intensive care, surgery, post-operative care and for supporting managing chronic illness.

Smiths Medical is an EEO/AA Employer/Vet/Disabled

If you require assistance with our online job submission process, please contact our Talent Acquisition team at ************ to request an accommodation. Additionally, Smiths Medical invites interested deaf and hard of hearing applicants to use Video Relay Service (VRS).

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Company Profile
Mouchel is an infrastructure and business services group that provides design, managerial, engineering and operational services to support modern society. We work with UK government agencies, local authorities and with industries regulated by government to provide safe and reliable roads, effective and well managed local education and civic infrastructure, clean water and cost-effective energy. Mouchel has helped identify opportunities for government to work more effectively to deliver improved services and has worked in partnership with these same organisations to deliver these more efficiently. For more than a century, Mouchel has been helping to shape and transform the world we live in. In 1897, Louis Gustave Mouchel first brought the patent for reinforced concrete to the UK and, following its introduction, there were huge strides in engineering as we used our ingenuity to pioneer its use in all aspects of construction, such as the first bridges made out of the material; the first UK skyscraper (the Liver Building built in 1909); the chimneys for Battersea Power Station; and, in the time of war, floating concrete structures called Mulberry Harbours which helped the D-Day landings.

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