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Trademark Counsel, Intellectual Property

Company Description

AbbVie's mission is to discover and deliver innovative medicines and solutions that solve serious health issues today and address the medical challenges of tomorrow. We strive to have a remarkable impact on people's lives across several key therapeutic areas – immunology, oncology, neuroscience, and eye care – and products and services in our Allergan Aesthetics portfolio. For more information about AbbVie, please visit us at www.abbvie.com. Follow @abbvie on XFacebookInstagramYouTubeLinkedIn and Tik Tok.

Job Description

AbbVie is searching for an in-house Trademark Counsel in its Intellectual Property group. This position will be based in AbbVie’s Irvine, California office.  

Working both individually and in cross-functional teams, the in-house Trademark Counsel will develop and implement trademark and copyright strategies across AbbVie’s Aesthetics and Pharmaceutical products and product candidates. 

Responsibilities:

  • Perform US and OUS trademark searches, including online searching; analyze third party goods, services, trademarks and service marks and provide legal advice relating thereto
  • Prepare, file and prosecute US and OUS trademark applications and consult with internal commercial colleagues and outside counsel as appropriate
  • Monitor watch notices and challenge and defend trademarks in opposition, cancellation, and other proceedings
  • Maximize AbbVie’s competitive trademark positions through creation and implementation of intellectual property strategies
  • Provide legal advice and counsel to cross-functional R&D, marketing, publication, communication, and other colleagues on a variety of trademark and copyright-related matters
  • Conduct trademark and copyright-related due diligence in support of business development activities
  • Provide trademark-related legal advice relating to and in support of the company’s brand protection, anti-counterfeiting, and product protection activities
  • Partner with and support other departments on brand protection, anti-counterfeiting, and product protection issues
  • Manage and engage in online enforcement against unauthorized use of AbbVie’s trademarks, including working with service providers, industry collaborations and online platforms and initiating UDRPs and civil actions as appropriate
  • Manage trademark recordations with customs

Qualifications

  • Juris Doctorate degree from an accredited law school
  • State bar admission (specific state admission not required)
  • Strong legal, analytical, research, communication, and interpersonal skills
  • Demonstrated ability to manage complex projects to meet deadlines
  • Must be self-motivated, detail-oriented with high work standards
  • Ability to work well collaboratively and independently
  • Willingness and ability to work with and coordinate activities with a large number of individuals across various US and OUS departments
  • Ability to think creatively and devise solutions to challenging problems
  • Ability to manage and serve a wide range of client groups within the company by recognizing and responding quickly and pragmatically.

Preferred Experience:

  • 3+ years of law firm or in-house U.S. and OUS trademark prosecution, searching and enforcement experience
  • Juris Doctorate from a nationally recognized law school
  • Admitted to practice law
  • Pharmaceutical or aesthetics industry experience preferred
  • Experience in online brand protection preferred

Additional Information

Applicable only to applicants applying to a position in any location with pay disclosure requirements under state or local law: ​

  • The compensation range described below is the range of possible base pay compensation that the Company believes in good faith it will pay for this role at the time of this posting based on the job grade for this position. Individual compensation paid within this range will depend on many factors including geographic location, and we may ultimately pay more or less than the posted range. This range may be modified in the future.​

  • We offer a comprehensive package of benefits including paid time off (vacation, holidays, sick), medical/dental/vision insurance and 401(k) to eligible employees.​

  • This job is eligible to participate in our short-term incentive programs. ​

  • This job is eligible to participate in our long-term incentive programs​

Note: No amount of pay is considered to be wages or compensation until such amount is earned, vested, and determinable. The amount and availability of any bonus, commission, incentive, benefits, or any other form of compensation and benefits that are allocable to a particular employee remains in the Company's sole and absolute discretion unless and until paid and may be modified at the Company’s sole and absolute discretion, consistent with applicable law. 

AbbVie is an equal opportunity employer and is committed to operating with integrity, driving innovation, transforming lives, serving our community and embracing diversity and inclusion.  It is AbbVie’s policy to employ qualified persons of the greatest ability without discrimination against any employee or applicant for employment because of race, color, religion, national origin, age, sex (including pregnancy), physical or mental disability, medical condition, genetic information, gender identity or expression, sexual orientation, marital status, status as a protected veteran, or any other legally protected group status.

US & Puerto Rico only - to learn more, visit https://www.abbvie.com/join-us/equal-employment-opportunity-employer.html 

US & Puerto Rico applicants seeking a reasonable accommodation, click here to learn more:

https://www.abbvie.com/join-us/reasonable-accommodations.html

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Average salary estimate

$125000 / YEARLY (est.)
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$100000K
$150000K

If an employer mentions a salary or salary range on their job, we display it as an "Employer Estimate". If a job has no salary data, Rise displays an estimate if available.

What You Should Know About Trademark Counsel, Intellectual Property, AbbVie

Are you a passionate legal professional looking for an exciting opportunity? AbbVie is currently seeking a dedicated Trademark Counsel to join our dynamic Intellectual Property group in Irvine, California. In this role, you’ll collaborate both individually and with cross-functional teams to develop and implement trademark and copyright strategies for our Aesthetics and Pharmaceutical products. Your expertise will guide the execution of various trademark searches, analysis of third-party trademarks, and preparation of trademark applications at both domestic and international levels. You will also play a crucial role in monitoring trademark notices and defending our rights through opposition and cancellation proceedings. At AbbVie, you’ll thrive in an environment focused on innovation and teamwork, advising colleagues across R&D, marketing, and communications on all trademark and copyright-related inquiries. The ideal candidate will have strong communication skills and a proven ability to navigate complex projects while delivering results on time. If you have a Juris Doctorate degree, several years of trademark prosecution experience, and a passion for making a difference in the healthcare industry, we’d love to hear from you. Come join us at AbbVie, where we’re dedicated to transforming lives!

Frequently Asked Questions (FAQs) for Trademark Counsel, Intellectual Property Role at AbbVie
What are the primary responsibilities of the Trademark Counsel at AbbVie?

As the Trademark Counsel at AbbVie, you'll be responsible for conducting comprehensive US and OUS trademark searches, analyzing third-party trademarks, preparing and prosecuting trademark applications, and providing legal advice to various internal teams. You'll also defend AbbVie’s trademarks in opposition and cancellation proceedings, develop intellectual property strategies, and engage in brand protection initiatives.

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What qualifications are required for the Trademark Counsel position at AbbVie?

To qualify for the Trademark Counsel role at AbbVie, candidates must hold a Juris Doctorate from an accredited law school and have state bar admission. Additionally, the position requires a minimum of three years of trademark prosecution or enforcement experience, alongside strong legal and communication skills, and a detail-oriented, self-motivated approach.

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What makes AbbVie a great place to work as a Trademark Counsel?

AbbVie is an innovative company dedicated to transforming patient health through collaborative efforts and a strong focus on intellectual property. As a Trademark Counsel at AbbVie, you will be part of a passionate team that plays a key role in protecting the integrity of our products while contributing to meaningful medicines and therapeutic strategies. The company values diversity, inclusion, and professional growth.

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How does the Trademark Counsel at AbbVie collaborate with other departments?

The Trademark Counsel at AbbVie works closely with cross-functional teams, including R&D, marketing, and communications, to offer legal advice on trademark and copyright matters. This collaboration ensures the protection of AbbVie’s brand and aligns our intellectual property strategies with business development efforts, contributing to the success of our innovative products.

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What type of experience is preferred for the Trademark Counsel role at AbbVie?

Preferred experience for the Trademark Counsel position at AbbVie includes over three years of law firm or in-house trademark prosecution experience, particularly within the pharmaceutical or aesthetics industries. Familiarity with online brand protection measures and a pro-active approach to complex legal challenges will be highly valued.

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Common Interview Questions for Trademark Counsel, Intellectual Property
Can you describe your experience with trademark searches and registrations?

Discuss specifics of your previous roles where you've conducted trademark searches, highlighting your methods for ensuring thorough and accurate results. Mention any trademark registrations you've managed, explaining the processes you followed to navigate both domestic and international systems.

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How do you manage deadlines and prioritize multiple trademark projects?

Share a systematic approach you use for project management, including tools and strategies like timelines, checklists, or team collaboration platforms to stay organized and meet deadlines, especially within a high-volume environment.

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What strategies would you implement for brand protection?

Detail your experience with brand protection strategies such as monitoring online marketplaces, managing anti-counterfeiting initiatives, and collaborating with law enforcement. Include examples of how you've defended trademarks in opposition proceedings effectively.

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How do you handle conflicts with third-party trademarks?

Discuss your experience in conflict resolution, underscoring the importance of understanding the underlying legal principles, conducting thorough research, and maintaining open communication with involved parties to reach amicable solutions.

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What role does collaboration play in your work as a Trademark Counsel?

Emphasize the value you place on collaboration with your colleagues across various departments. Illustrate with examples how cross-department interactions help align legal strategy with business goals for effective trademark management.

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Can you give an example of a complex trademark issue you resolved?

Narrate a specific case where you successfully navigated a complex trademark challenge, explaining your analytical process, the decisions you made, and the outcomes that benefited your organization.

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What makes you passionate about intellectual property law?

Share personal motivations that drive your passion for intellectual property law, including any inspiring experiences or individuals that influenced your career choice. Convey how this passion aligns with AbbVie’s mission.

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How do you stay updated with changes in trademark laws?

Discuss your strategies for staying informed about legal updates, such as attending conferences, participating in professional organizations, subscribing to legal publications, or following reliable online resources focused on intellectual property.

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What would you do if your proposed trademark application is rejected?

Explain your methodical approach to handling a trademark application rejection, including analyzing the reasons for denial, consulting relevant case law, and preparing a revised strategy to address the objections.

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Why do you believe AbbVie would be a great fit for you as a Trademark Counsel?

Articulate why AbbVie’s values, mission, and work environment resonate with you. Highlight your interest in contributing to their commitment to innovation and legal excellence while supporting their brand protection efforts.

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AbbVie’s mission is to discover and deliver innovative medicines that solve serious health issues today and address the medical challenges of tomorrow. We strive to have a remarkable impact on people’s lives across several key therapeutic areas: i...

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DATE POSTED
March 19, 2025

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