GUCCI Intellectual Property Counsel
Gucci - Regular
NEW YORK - United States of America
Manage and enhance Gucci’s Intellectual Property (IP) strategy and all related activities and programs in the United States (U.S.). Work directly with the Global IP Director, Global (WW) IP team and VP General Counsel, North America on all IP matters, including search and clearances, filings and renewals, portfolio optimization, prosecutions, investigations, brand enforcement actions, monitoring programs, on-line and social media platforms, C&D letters and pre-contentious and litigation matters.
Protect, defend, safeguard and enforce Gucci’s IP rights and the Gucci Brand reputation and goodwill in the U.S. Implement and execute Gucci’s global IP strategy in the U.S. and develop strong and cost-effective action plans and programs. Increase results both off-line and on-line. Manage and allocate the U.S. IP budget in a cost-effective manner and analyze and report results and areas of improvements. Provide regular reports to both WW and US teams.
There is an emphasis on working closely and partnering internationally with a variety of different in-house stakeholders and teams, across various countries and departments, to provide business driven and practical advice, creative solutions and support the brand on a wide range of IP projects, product and content launches and issues.
- Take active and strategic role and leadership in all intellectual property matters in the U.S., work closely with the Global IP Director and WW IP team and execute Gucci programs, strategy and guidelines;
- Manage the U.S. IP budget and all related IP programs, actions and efforts in the U.S.;
- Advise and partner with the business by providing day-to-day IP support, analysis and counseling relating to portfolio management (trademarks, trade dress, copyrights and design patents), new collections and content, and brand protection and enforcement matters;
- Closely collaborate with the IP team around the world and IP outside counsel to develop a strong IP action plan in the U.S. and a cost-effective related strategy. Implement and execute Gucci global IP strategy in the U.S. Increase ROI and IP results at large both on qualitative and quantitative standpoints (KPIs);
- Analyze new projects and carry out clearances, searches, prior art analyses and project assessment through on-line IP database and web searches and case law;
- Draft, review and analyze intellectual property-related documents (agreements; assignments, licenses, contracts, letter of consent releases, C&D letters, take down notices, oppositions);
- Prepare legal analyses, opinions, memoranda and IP assessments;
- Handle anti-counterfeiting and enforcement matters and programs and oversee investigative firms;
- Work closely with the Gucci Legal Department Manager and Legal Coordinator regarding anti-counterfeiting as well as oversee the Intellectual Property support responsibilities;
- Coordinate and liaise with outside counsel and review pre-litigation and litigation filings, collect and secure evidence;
- Define and implement a solid defensive strategy; mitigate possible risks and issues at large both on intellectual property and reputational risk standpoints. Work closely with the Brand Engagement team and the Gucci Global Equity Board to report potentially sensitive issues related to the collections and products;
- Strongly collaborate and exchange best practices with third-party US digital platforms and social media channels. Maximize the use of technology and use of IP tools, protocols and programs. Closely collaborate with U.S. IP associations and law and brand enforcement agencies in the U.S. Increase trainings, joint actions and raids.
- J.D. from top law school; must be admitted to, active and in good standing with the New York State Bar.
- 8-10 years of IP experience with top IP law firm or practice group and/or corporate in-house IP/legal department;
- Foreign language skills (preferably Italian) and international experience abroad are a plus.
Desired Competencies and Skills
- Strong, hands-on experience in intellectual property matters;
- In-depth knowledge of and strong background in brand enforcement, clearances, IP on-line programs, trademark, copyright and other IP issues and portfolios;
- Excellent analytical skills and ability to provide business-oriented strategic, practical advice and creative solutions;
- Ability to handle sensitive/confidential information requiring a high level of discretion and integrity;
- Attention to detail, organization, efficiency and preparedness;
- Business oriented, with a problem-solving attitude;
- Ability to work under time constraints and to adapt to a very fast-paced and frequently changing environment; ability to multi-task and juggle competing priorities;
- Technical writing and drafting skills;
- Professionalism and excellent interpersonal and oral communication skills that are adaptable based on the audience; comfort in communicating to senior management and internal clients at all levels of the organization;
- Teamwork attitude and ability to work with an international team;
- Highly motivated and committed to excellence and dedication in terms of time, efforts, work product and results;
- Familiarity and comfort with latest digital technologies and marketplace, social media and communication platforms; strong computer skills and software application proficiency in platforms such as Excel, PowerPoint, MS Word as well as IP-based data and search tools.
- Sees the big picture and understands how own actions and decisions impact others and the organization as a whole
- Actively scans the environment for new approaches, blending different ideas to come with creative yet effective solutions
- Actively gets things done, raising the bar for performance and taking accountability for own actions
- Driven by the sense of urgency, promotes change and takes smart risks in pursuit of goals
- Builds trust-based relationships across boundaries and encourages collaboration
- Adapts own style to communicate impactfully
- Empowers others by providing autonomy and encouraging self-expression, valuing and amplifying each person’s uniqueness
- Is self-aware, curious to learn and seeks feedback from others to continuously grow, always putting improvement over comfort
- Provides constructive and on-going feedback, coaches and helps others to achieve their full potential
- Qualified candidates must have the proper work authorization to work in the United States.
- Full time
- United States of America