This position is a rare opportunity to become a member of the Viacom Law Department, one of the “Best Legal Departments” as recognized by Corporate Counsel Magazine in 2016. In this position, you will join a dynamic and well-established group with deep knowledge of Viacom’s business and intellectual property. Under the general supervision of the Vice-President, Intellectual Property/Litigation and working in direct and daily collaboration with and under the supervision of the Vice-President, Intellectual Property, and together with Viacom’s team of highly-skilled Intellectual Property professionals, you will provide legal support to the Intellectual Property team. Your duties will include conducting trademark clearances and providing, together with the Intellectual Property team, opinions and counsel to Viacom’s fast-moving creative and business teams. You will also provide essential maintenance and support for Viacom’s extensive trademark portfolio. Viacom is a company with a culture of collaboration, and the law department embraces that culture. Viacom is looking for a collaborative, team-oriented self-starter.
Essential Duties and Responsibilities:
Conduct trademark clearances, review and analyze preliminary and full trademark search reports and provide opinions/guidance and advice to creative and business teams regarding the availability of trademarks for use/registration;
Prepare responses to substantive Office Actions issued by the USPTO;
Prepare and review trademark maintenance documents, including, but not limited to Statements of Use, Sections 8 & 15, Sections 8 & 9;
Prepare trademark and copyright assignments and file such documents with the USPTO;
Review watch notices and prepare cease and desist notices in connection with infringements of Viacom’s portfolio of intellectual property;
Assist with IP enforcement actions, including, but not limited to UDRPs, infringement actions, letters of protest, cancellation actions, co-existence agreements, Customs recordations and trademark oppositions;
If candidate does not already have knowledge of international trademark practice, willingness to learn by working directly the Vice-President, Intellectual Property and Viacom’s team of international IP professionals.
4+ years practicing law in areas of trademarks;
Experience in trademark enforcement;
Experience in trademark clearance and prosecution;
J.D. Degree, admitted in New York
Excellent knowledge of US trademark law;
Highly organized, and able to manage a variety of issues and legal matters efficiently;
Ability to clearly and succinctly articulate, both verbally and in writing, Viacom’s legal positions and to effectively argue in support of those positions;
Knowledge of international intellectual property/trademark practice is a plus;
Ability to work collaboratively with our highly-skilled Intellectual Property team in a cooperative, supportive, team-oriented approach; and
At Viacom, our employees are our biggest stars — a diverse, unbelievably talented collection of creative thinkers, dreamers and doers who propel our business forward and make us one of the premier entertainment media companies on the planet. We look for the brightest in the business, and we boast a one-of-a-kind corporate culture that empowers our people to be who they are and do their best work. Check out our current job openings and browse the site to learn more about what makes Viacom tick.