Sr. Counsel TM, Copyright & Designs (5350)

Be a part of a revolutionary change!

At Philip Morris International (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, if 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.

The Senior Counsel within the Trademark, Copyright and Designs team of the PMI Law Department will be effective in exercising seasoned judgment to provide actionable, clear, and concise advice and guidance to the business and functional leaders across the company. Leading teams and projects including day-to-day advice to the company and its business professionals on a range of Trademark, Copyright, and Design matters. Ensures that strategy, policy, and practices are properly established, reviewed, and implemented.

• Strong legal competence in the field of trademarks, designs, and copyrights, with emphasis on trademark searches, filing, prosecution, oppositions, and enforcement.
• Litigation and/or transactional experience.
• Excellent analytical and legal drafting skills.
• Able to deploy creative thinking to achieve business objectives, while ensuring legal compliance.
• Clarity in both written and verbal communication.
• A willingness to proactively connect and support business clients.
• Ability to manage people and organize workloads within a team, efficiently and time sensitively.
• An understanding of how a multinational company operates would be an advantage.

1. Clearance – Providing Freedom to Operate advice

Support business and legal and compliance on trademark and copyright clearance requests for new products, promotional material, and activities:

• Partner with internal clients to create proactive strategies designed to avoid or minimize exposure to legal liability and help business partners understand the risks and consequences of commercial activities including providing trademark and design freedom to use/operate advice.
• Conducting trademark clearance searches in-house using a software platform we subscribe to.
• Conducting searches through outside counsel for main brands and logos.
• Engaging effectively with Outside Counsel to ask pertinent questions and obtain timely clarification of search results to enable a proper assessment of business risk.
• Trademark clearance advice should be provided to the business within agreed deadlines or, where no deadline is specified, within 15 working days for full clearance search reports and 3 days for preliminary internal searches.
• Instructing use investigations of third-party marks where required and evaluate whether target marks are vulnerable to non-use cancellation.
• Analyzing content the business intends to use on packaging and promotional materials, and advising the business regarding third party names and logos; images of third party products that are recognisable by their shape or get-up; images of recognisable individuals who have not provided their consent; trademarks or images that may amount to ambush marketing; and images of architectural works and works of art in which copyright or other relevant statutory rights exist.
• Counselling the business about using the TM and © symbols in line with PMI’s policies.
• Providing clearly written and well analyzed clearance advice using agreed templates and legal department risk language.
• Building an understanding of the business’ requirements.

1. Trademark portfolio management

Support the business by managing its trademark IP rights.

• Devising, preparing, and instructing global, regional, and customized trademark filing programs.
• Initiating Convention priority applications in a timely manner.
• Ensuring filing program instructions are accurate and contain the necessary information to enable application records to be created and instructions sent to outside counsel.
• Regularly reviewing global filing programs for continued relevance.
• Conduct annual trademark renewal reviews. Seek feedback from the business before making an informed final lapse/renew decision.
• Managing the trademark portfolio caseload, prioritizing appropriately, and dealing with business-critical matters expeditiously.
• Ensuring Registry objections are dealt with within official deadlines, without any unnecessary extensions of time.
• Reviewing outside counsel draft registry submissions.
• Understanding local regulatory requirements that impact our filing strategy and instructing filings accordingly.
• Effective communication with OC to clarify recommended strategy; good quality instructions to outside counsel to overcome registry objections.
• Building an understanding of the business requirements of the region.

1. Contentious

Support the business and legal and compliance on contentious matters before the Registry (active and passive oppositions and cancellations) and the courts (infringement, litigation, and cancellation actions), including cease and desist letters, and customs seizures. Provide support to the Online Enforcement team on matters being handled by them where required. Draft PM39s to obtain litigation approval.

• Whilst reviewing search reports identify in which instances it is appropriate to have an umbrella strategy dealing with the same / similar marks owned by a single entity in multiple jurisdictions and devise a strategy related to cancellations / oppositions of such marks.
• Conducting frequent (at least weekly) reviews of watch notices to identify possible applications to oppose within the official opposition deadlines.
• Ensuring all oppositions are filed and responses made within the official deadlines, without any unnecessary extensions of time.
• Reviewing and gathering evidence.
• Providing good quality instructions to outside counsel and communicating effectively with outside counsel to clarify the recommended strategy.
• Reviewing outside counsel’s submissions to ensure appropriate arguments are being made and instructing them in a timely manner.
• Taking positions that are consistent with our global strategy.
• Updating and renewing our customs applications, providing the customs authorities with examples of our products, and liaising with the Illicit Trade Prevention team regarding customs matters.
• Providing the business with trademark, copyright, and design infringement analysis, including prospects of success and recommendations.
• When appropriate negotiating settlement agreements with other side.
• Reviewing and drafting settlement agreements, letters of consent and undertakings.
• Drafting and reviewing letters before action and cease and desist letters.
• In-depth understanding of opposition, cancellation, and infringement procedures.
• Ensuring DIAMS chronology and actions are appropriately managed, dispute records updated and when necessary, closed in a timely manner.
• Build an understanding of the business’ requirements.

1. Online Enforcement

Support the business and legal and compliance on online enforcement matters including cease and desist letters, takedown notices on social media platforms, online marketplaces and other websites, host complaints, domain name disputes, and UDRPs.

• Understand and implement PMI’s online enforcement strategy.
• Review takedown notices, cease-and-desist letters, host complaints, UDRP complaints before action.
• Review and action listings on our online enforcement tools to determine whether the social media, online marketplace, website, or domain listings are infringing PMIs IP or not.
• Understanding of online enforcement strategies and tactics.
• Monitoring legal developments relevant to online enforcement.
• Reviewing and gathering evidence for online enforcement.
• Ensuring transfer of domain names or other online assets to our portfolio where we have been successful in actions.
• Develop trainings and reports about online enforcement.
• Under guidance and supervision of TCD management participating in and promoting PMIs positions regarding online enforcement with authorities, policy makers and collaborators to the extend necessary.

1. Ad-hoc IP advice / matters

Support the business in relation to all trademark, copyright, and design queries such as:

• Providing advice on the use of AI (Artificial Intelligence)
• Use of third-party trademarks such as TWITTER, BLUETOOTH, and SPOTIFY.
• Reviewing and providing recommendations for user manuals for our devices.
• Reviewing the IP clauses of commercial contracts and advising on any required amendments.
• Providing advice to the business on the use of fonts from an IP perspective, including reviewing the relevant licenses.
• Provide advice on intra-group licensing, considering the view of various team members in the business and drafting / reviewing the IP terms.
• Drafting / reviewing assignment agreements (intra-group and with third parties).
• Drafting / reviewing consents from individuals allowing us to use their name, signature, or likeness.
• Reviewing draft bills in local markets, for instance, those relating to plain packaging regulations and flavor bans for certain goods and providing our comments from an IP perspective.
• Supporting M&A by conducting TM and Design due diligence on target companies and drafting recommendations.
• Represents the company’s position before federal, state, and local government agencies regarding Trademark, Copyright and Designs.

1. Designs

• Understand design law, what it protects and how we use designs to protect our packaging, devices, and accessories.
• Understand the strategies and tactics of design protection to ensure the broadest possible protection for designs.
• When reviewing products, software, applications, marketing material and packaging consider whether design protection is appropriate.
• Review products, software, applications, packaging, and marketing material and ensure Freedom to Operate searches and analysis is conducted timely where necessary.
• Advice business as to design FTOs, design protection and risk mitigation measures during product or material development.
• Work with Product Development to identify and ensure new devices and accessories are protected via designs when appropriate.

1. IP training

Provide regular IP training and IP updates to business, marketing, and legal teams on, for example, the following:

• PM 6-C.
• Use of third-party brands and products.
• Our processes and how we can support the business.
• Uses of image banks.
• Specific areas of interest to marketing and business teams.

1. Budget

• Demonstrate an understanding of when to use internal resources rather than instruct outside counsel to help keep down external costs.
• Run matters efficiently to ensure unnecessary outside counsel fees are not incurred.
• Consider cost/benefit when devising clearance and filing strategies.
• Provide clear budgetary analysis of specific issues or cases when requested.
• Provide legal fee estimates when requested for inclusion in Monthly cost visibility report.
• Approve invoices in Legal Tracker in accordance with our guidelines.

• Qualified trademark attorney and/or solicitor or equivalent.
• At least 7 years of focused experience which demonstrates an in-depth knowledge and applied understanding of area of expertise; both in-house and major law firm experience preferred.
• Previous managerial and leadership experience preferred.
• Ability to supervise complex projects and lead them to successful completion in an organized, efficient, and effective manner.
• Ability to lead and work in a multi-disciplinary setting to achieve consensus.

• 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 millions of smokers.

PMI is an Equal Opportunity Employer.

PMI is headquartered in Stamford, Conn., and its U.S. affiliates have more than 2,300 employees.

PMI has been an entirely separate company from Altria and Philip Morris USA since 2008. PMI’s affiliates first entered the U.S. market following the company’s acquisition of Swedish Match in late 2022.

Philip Morris International and its U.S. affiliates are working to deliver a smoke-free future. Since 2008, PMI has invested $12.5 billion globally to develop, scientifically substantiate and commercialize innovative smoke-free products for adults who would otherwise continue to smoke with the goal of transitioning legal-age consumers who smoke to better alternatives. In 2022, PMI acquired Swedish Match – a leader in oral nicotine delivery – creating a global smoke-free champion led by the IQOS and ZYN brands. The U.S. Food and Drug Administration has authorized versions of PMI’s IQOS electronically heated tobacco devices and Swedish Match’s General snus as Modified Risk Tobacco Products and renewal applications for these products are presently pending before the FDA. For more information, please visit www.pmi.com/us and www.pmiscience.com.