The Legal Specialist - Trademarks is responsible for the management and support of clearance, prosecution and enforcement related to AbbVie's global trademark portfolio. This position works closely with the responsible in-house trademark attorneys in analyzing complex legal issues, developing and executing strategic solutions while acting as a liaison with business units and outside counsel worldwide. The role includes analyzing unauthorized online use of AbbVie's trademarks and determining appropriate enforcement actions in consultation with AbbVie's trademark attorneys. This position will be based in our Irvine, CA office with a hybrid work model (onsite 3+ days/week).

Core Responsibilities:

Trademark Prosecution & Portfolio Management

• Manage filing and maintenance of domestic and international trademark applications, recordal of assignments, renewals, office actions and new filings, including management of docket to ensure all deadlines are met.
• Prepare and prosecute US trademark applications in oncology therapeutic area and aesthetics, and coordinate with foreign law firms in connection with OUS trademark applications.
• Review correspondence from foreign counsel, prepare draft responses for attorney review, and communicate instructions to agents regarding office actions and other requests.
• Communicate with foreign agents and the USPTO regarding status.

Trademark Clearance & Research

• Conduct research for trademark availability and coordinate with foreign law firms in connection with OUS research.
• Assist in US and foreign trademark searches, including online searching to determine the availability of trademarks and prepare summaries for in-house counsel.

Enforcement & Brand Protection

• Analyze unauthorized online use of AbbVie's trademarks.
• Determine appropriate action(s) against unauthorized online use of AbbVie's trademarks and consult with AbbVie's trademark attorneys, as needed.
• Prepare correspondence with internal colleagues summarizing various enforcement actions taken and further information needed.
• Coordinate with vendors and outside law firms to assist with unauthorized online use of AbbVie's trademarks, as needed.
• Monitor watch notices and assist with opposition/conflict proceedings and organize evidence in support of such conflicts.

Business & Stakeholder Coordination

• Communicate directly with business units concerning current use of trademarks and obtain evidence in support of use.
• Evaluate, research and provide appropriate legal statements on AbbVie's carton, packages and labels.
• Coordinate trademark file transfers and prepare necessary documentation in connection with trademarks portfolio acquisition and divestitures.
• Oversee execution and legalization of documents such as trademark assignments, powers of attorney, consents, etc., for submission in international trademark matters.