Senior Specialist, Legal Trademarks

Company Description

Abb Vie’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 Abb Vie, please visit us at  Follow @abbvie on X, Facebook, Instagram, You Tube, Linked In, and Tik Tok.

The Legal Specialist – Trademarks is responsible for the management and support of clearance, prosecution and enforcement related to Abb Vie’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 Abb Vie’s trademarks and determining appropriate enforcement actions in consultation with Abb Vie’s trademark attorneys.

This position will be based in our Irvine, CA office with a hybrid work model (onsite 3+ days/week).

• 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.

• 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.

• Analyze unauthorized online use of Abb Vie’s trademarks.
• Determine appropriate action(s) against unauthorized online use of Abb Vie’s trademarks and consult with Abb Vie’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 Abb Vie’s trademarks, as needed.
• Monitor watch notices and assist with opposition/conflict proceedings and organize evidence in support of such conflicts.

• 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 Abb Vie’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.

• Bachelor’s Degree, at minimum, required.

• Minimum 5 years’ experience within a law firm or intellectual property department of a corporation.
• Minimum 3 years’ experience with trademark enforcement activities.
• Extensive knowledge of domestic and international regulations, policies and processes related to trademark prosecution.

• Discretion and strong communication skills required to effectively gather relevant information from internal and external clients and interact with others, both inside and outside the company.
• Excellent organizational, interpersonal, and oral and written communication skills.

• Strong writing and analytical skills required to independently review, draft, and prepare…