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Job Description Summary
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<br> Responsible for the protection of the Blue Brands by managing BCBSA’s portfolio of trademark registrations and applications and managing enforcement of the BCBSA’s trademark rights against infringement by third parties. Responsible for assisting with and handling administration and application of the Brand Regulations and License Agreements with Licensees and clients, including working with BCBSA internal clients to provide legal advice and guidance.
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Responsibilities include but are not limited to:
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Responsible for the pursuit and, to the extent possible, resolution of trademark infringements up to the point of litigation to protect the Brands for matters in the Trademark Office, internationally and for common law misuse, including on the web. This includes in-house work (e.g., conducting investigations, corresponding with foreign counsel, providing advice and guidance to Chief Brand Counsel and others regarding strategy, issuing cease and desist and other appropriate letters, and negotiating resolutions) and management of outside counsel, as appropriate. In addition, provide in-house support for matters that reach litigation (e.g., work with appropriate clients and legal to collect evidence and documents for production, review pleadings/motions, and participate in strategy discussions).
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Serve as counsel to brand focused internal BCBSA clients, including Brand Strategy, Communications, and International. Responsible for approving communication materials, developing and negotiating international licensee agreements and other, special product license agreements. This work will include attending client meetings and providing legal advice to our clients regarding the provisions in the license agreements and brand regulations.
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Work with BCBS licensees to administer and enforce the BCBSA issued License Agreements and Brand Regulations to include managing brand use review.
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Required Education, Certifications and Experience
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Juris Doctorate
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Licensed to practice law in the State of Illinois is required.
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Eight (8) years Attorney experience required.
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Experience in trademark enforcement and prosecution (emphasis on enforcement, including trademark litigation and resolving matters before the TTAB). Must be strong in familiarity with Lanham Act and case law.
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Ability to communicate effectively with clients and licensees (business partners) with understanding of business processes and policies in connection with providing legal advice.
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Demonstrated ability in the implementation of a trademark enforcement program and licensing system.
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Strong organizational and follow through skills.
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Strong written and oral communication skills including negotiation skills.
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Preferred Education, Certifications and Experience
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Knowledge of insurance industry helpful
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In house experience advising client, while protecting client brand (preferred).
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People Management -No
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