Corporate Counsel – Global Trademarks and Brand Enforcement

Primary Purpose of Role

As Corporate Counsel – Global Trademarks and Brand Enforcement, you will support Allison’s Global Marketing, Brand, and Aftermarket Sales & Service functions, related to trademarks, copyright, domain names, brand enforcement and licensing. You will manage outside counsel to protect Allison’s trademark rights. You will collaborate with Allison’s business functions and other colleagues in Allison’s Legal department regarding trademark registration, licensing, clearance, and counselling, as well as other intellectual property matters. In this role, you will be required to utilize your strategic business insight, as much as your legal knowledge, in collaborating with business leadership and functional organizations to meet business objectives.

Key Responsibilities

• Provide legal leadership and support to Allison’s Global Marketing, Brand, and Aftermarket Sales & Service functions.
• Advise Marketing organization throughout all phases of trademark selection and implementation, marketing and digital content compliance, and advise business leaders on legal risks.
• Manage outside counsel in the preparation, prosecution, and renewal of trademark registrations around the world.
• Handle trademark and brand enforcement matters in collaboration with outside counsel.
• Draft and negotiate trademark and related license agreements.
• Aid in the analysis and advice regarding pre-litigation trademark and brand enforcement matters.
• Aid in the preparation of various legal training courses for the Marketing and Brand functions.
• Ensure appropriate internal reporting within the Legal team, and respective business partners, exercising good judgment on what is material to the audience.
• Support the business with a variety of commercial transactions as needed, including M&A efforts and integration.
• Adapt easily to new circumstances and take on other duties as assigned.

Key Performance Measures

• Actively partners with the Marketing and Brand teams to proactively assess risk and develop plans to mitigate potential adverse outcomes, as well as look for practical ways to add value and efficiency to the processes.
• Timely and accurately provides technically sound, practical and actionable legal advice to internal stakeholders.
• Reduces legal exposure, risk, and outside spend related to the matters for which the individual is responsible.
• Proactively engages with colleagues and leadership within the Legal team to assess areas for process improvement and advocate for the adoption of measures that could improve the function.

Qualifications

• Experience providing legal support to a global marketing and brand organization, preferably in a manufacturing environment.
• Well-developed legal, analytical, and problem-solving skills with the ability to adapt, taking on new roles and comfort learning new areas of the law.
• Excellent verbal and written communication and presentation skills, with ability to communicate information effectively to non-lawyers at all levels of a business.
• Detail oriented.
• Skill in establishing and maintaining effective relationships with key stakeholders.
• Able to exercise initiative, judgment, discretion and decision-making to achieve organizational objectives and elevate matters to Legal leadership at appropriate time.
• Experience 6+ years of trademark and intellectual property legal experience in law firm and in-house settings.
• Strong experience with trademark preparation and prosecution and portfolio management.
• Strong experience with trademark licensing and related commercial transactions.
• Possess a Juris Doctor Degree.
• Active license to practice law in at least one state with no pending discipline or complaints and the ability to obtain a license to practice law in Indiana.
• Registration to practice before the United States Patent and Trademark Office is a plus but not required.