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Trademark Counsel

Trademark Counsel

  • Location United States of America - Illinois - Chicago, GB: London - 25 North Colonnade
  • Travel required Negligible travel should be expected with this role
  • Job category Legal Group
  • Relocation available This role is not eligible for relocation
  • Job type Professionals
  • Job code RQ082342
  • Experience level Senior
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Job summary

Job Family Group:

Legal Group


Job Description:

Our purpose is to bring together people, energy and markets to power and navigate a changing world. In a time of constant change and possibility we need new talent to pursue commercial opportunities, motivated by best-in-class insight and expertise. We’re always striving for more innovative digital solutions, sustainable outcomes and closer collaboration across our company and beyond, and you could be part of that too. Together we continue to grow as the world’s leading energy company!

  • Brands are ever present and prominent in all that bp does around the world. bp’s brands are highly valuable business assets, many of them being house-hold names.

  • Through new ventures and technologies, bp is embracing the dual challenge of meeting the world demand for more energy, yet delivering it with fewer emissions. In doing so, bp is expanding its portfolio of brands and partnerships requiring trade mark licences.

  • A full-time lawyer is required to join the Brands Legal team.

  • Brands Legal is a specialist team that provides global support to the whole of the bp Group in matters relating to the protection of trade marks, designs and copyright.

  • The successful candidate will be expected to be able to advise in relation to any or all of the above areas, on a global basis.

Job Responsibilities:

  • Providing commercially focussed advice on the clearance, protection and licensing of trade marks to all businesses within the bp Group of Companies, around the world.

  • Providing commercially focussed advice on copyright and managing copyright related complaints in the USA.

  • To conduct efficient trade mark clearance searches using a variety of services and sources.

  • Managing the prosecution of domestic, international and foreign trade mark applications, including responding to office actions.

  • Monitoring of third party trade mark applications via a watching service.

  • Management of trade mark opposition and enforcement cases, including anti-counterfeiting.

Job Requirements:

  • University degree.

  • Valid, active license to practice law with capability to serve as in-house counsel in this role.

  • CITMA qualified, or solicitor/barrister with appropriate experience.

  • Valid, active license to practice law with capability to serve as in-house counsel in this role.

  • Minimum of three years’ post qualification experience in intellectual property.

  • Experience/knowledge in the legal aspects of trade mark clearance and protection, particularly in the USA.

  • Experience/knowledge in the legal aspects of copyright protection in the USA – including issues relating to copyright licensing agencies.

  • Experience/knowledge in the legal aspects of trade mark licensing.

  • Experience of disputed matters with third parties relating to trade marks.

  • Experience of managing cases at the USTPO and litigation before the TTAB.

  • Excellent interpersonal and communication skills. This role requires engagement with businesses across bp.

  • Experience managing external service providers.

  • Experience of working in intellectual property, in a law firm, or in-house legal team.

  • Ability to apply sound business judgment to provide pragmatic legal solutions.

  • Ability to prioritize and work in a fast paced and rapidly evolving environment.

  • Ability to build and maintain positive relationships with colleagues and clients.

  • Proven ability to work as part of a team, demonstrating flexibility to support others in the team at times of high volume workload to achieve the best results.

* This role can be based in Chicago, IL or United Kingdom - London

Why join bp

At bp, we support our people to learn and grow in a diverse and challenging environment. We believe that our team is strengthened by diversity. We are committed to fostering an inclusive environment in which everyone is respected and treated fairly. There are many aspects of our employees’ lives that are meaningful, so we offer benefits to enable your work to fit with your life. These benefits can include flexible working options, a generous paid parental leave policy, and excellent retirement benefits, among others!


Travel Requirement:

Negligible travel should be expected with this role


Relocation Assistance:

This role is not eligible for relocation


Remote Type:

This position is a hybrid of office/remote working


Skills:

Intellectual Property, Intellectual Property Law, Trademark Law, Trademark Licensing


Legal Disclaimer:

We are an equal opportunity employer and value diversity at our company. We do not discriminate on the basis of race, religion, color, national origin, sex, gender, gender expression, sexual orientation, age, marital status, socioeconomic status, neurodiversity/neurocognitive functioning, veteran status or disability status. Individuals with an accessibility need may request an adjustment/accommodation related to bp’s recruiting process (e.g., accessing the job application, completing required assessments, participating in telephone screenings or interviews, etc.). If you would like to request an adjustment/accommodation related to the recruitment process, please contact us.

If you are selected for a position and depending upon your role, your employment may be contingent upon adherence to local policy. This may include pre-placement drug screening, medical review of physical fitness for the role, and background checks.

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