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Location Boston, United States, New York, United States, Dallas, United States Category Legal & Compliance Date posted 10/08/2021 Job ID 2104007
Intellectual Property Officer, Legal Counsel-2104007

Description

Position Summary:

Provides centralized coordination of the affiliates and subsidiaries of Santander US for all the Intellectual Property (IP) issues included but not limited to all related to trademarks, domain names, copyrights, trade secrets and social media.  Supports Corporate IP (Banco Santander, S.A., Madrid) in the effective implementation of the IP Corporate Model. In coordination with the Corporate IP unit, prepares, publishes and distributes the local Intellectual Property policies & procedures.  Manages Santander US trademarks, trademark licenses, and domain names; handles coordination of cease and desist letters and responds to infringement allegations. Provides oversight of third-party providers for IP.  In addition, supports colleagues in Real Estate, Contracts and Technology, particularly for certain licensing matters such as sponsorship, licensing, and lease agreements as well as NDAs.

Position Duties / Responsibilities:

  • Provides technical advice to all the affiliates and subsidiaries in Santander US for all activities related to IP issues, trademark management, domain names management and protection of Santander US IP rights in social media profiles and accounts.
  • Oversight of the unauthorized uses and eventual infractions of Santander’s IP rights in the US. Implementation of procedures, policies and corporate / local rules concerning Santander US activity. Oversees, supervises, adjusts and controls IP outside counsel functions. 
  • Defines, along with Corporate IP, the defensive strategy of the trademarks and domain names portfolios of all the affiliates and subsidiaries of Santander US. Supports Corporate IP regarding the search and selection or replacement of the IP outside counsel in the US.
  • Collaborates with Corporate IP  in the spreading and promotion of the good practice in the management and use of Santander IP rights. Collaborates with Corporate IP in the processes of incorporation and/or transfer of IP portfolios from new acquisitions and/or purchases-including estimate reports of the evolution of the expenditure in IP issues.
  • Prepares statements and periodical reports to Corporate IP  of the current situation of the different portfolios, namely, trademarks, patents, domain names, copyrights and/or social media profiles of affiliates and subsidiaries of Santander US.
  • Support colleagues in the Regulatory Operations and Legal Shared Services as needed with sponsorship, licensing, leasing agreements and/or support for regulatory issues.

Qualifications

Qualifications:

  • Bachelor's Degree, Juris Doctorate or equivalent from an accredited institution
  • Active and current license to practice law in a state within the Bank’s footprint
  • 5-9 years of experience practicing in a law firm or in-house corporate environment in banking or the financial services industry as an intellectual property attorney
  • Ability to deal effectively with the legal colleagues and executive management
  • Strong organizational and prioritization skills; ability to manage competing priorities effectively
  • Strong intellectual property legal experience.
  • Proven ability to meet stringent deadlines and adapt to changing priorities, operating in a fast-paced and dynamic environment.
  • Excellence in drafting; ability to present information in written and oral form clearly and effectively
  • Ability to define problems and collect relevant information and apply relevant legal principles to relevant factual situations
  • Excellent communication and interpersonal skills. 

At Santander, we value and respect differences in our workforce and strive to increase the diversity of our teams. We encourage everyone to apply.

Job

:Legal

Primary Location

:Massachusetts-BOSTON-75 State Street - 06366 - State Street-Corp

Other Locations

:New York-New York-45 East 53rd Street - 06547 - NY Corp, Texas-Dallas-1601 Elm Street - 02302 - Dallas

Organization

:Legal & Corp. Affairs (8830)

Schedule

:Full-time

Job Posting

:Aug 10, 2021, 7:27:09 PM

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