Legal Specialist

Position Summary: 

 Legal Specialist, Intellectual Property will support and have a variety of duties associated with the management of the intellectual property portfolio for the beer, wine and spirits divisions, under the supervision of the Associate General Counsel responsible for such matters. Individual will assist in the general management of the company’s intellectual property portfolio, including monitoring and protecting the trademarks, copyrights, patents, and trade secrets, searching and approving of new trademarks and trade dress, and providing guidance to business units related to various intellectual property issues.  The Legal Specialist will perform tasks relating to intellectual property matters, contracts, mergers and acquisitions, projects, and records management. Ideal candidate will have experience working within a heavily regulated (federal, state and local) industry like the U.S. beverage alcohol business and substantive experience in intellectual property law. A successful candidate will be a tech-savvy, creative, agile, self-motivated individual with a positive, can-do attitude to learn new tasks and contribute to the success of the team. Substantive experience working in a fast-paced environment, as well as balancing the needs of expanding and entrepreneurial business teams is a must.  

Primary Responsibilities: 

• Support the management of the company’s extensive worldwide trademark, copyright, and patent portfolio, including assisting with clearance, filing, maintenance, and enforcement matters. 

• Perform various day-to-day intellectual property portfolio management tasks, including: 

• Conduct and analyze preliminary trademark searches to help determine availability of trademarks, taglines, product names, and other consumer-facing content and update responses in legal departments’ trademark application, 

• Plan, coordinate, and manage trademark filings, renewals and assignments, 

• Manage outside counsel in their handling of the day-to-day prosecution and enforcement of domestic and foreign trademark, copyright, and patent applications, including working with business stakeholders to obtain evidence of use and other information needed for clearance, prosecution, and enforcement, 

• Monitor and manage IP deadlines and ensure timely filings, collaborating with R&D and marketing teams to identify and protect new IP assets, 

• Manage IP enforcement actions, including overseeing the management of trademark opposition and cancellation actions, cease and desist letters, and infringement analyses, 

• Gather data to assist in defending against claims of infringement and prosecuting claims against 3rd party infringement, 

• Review watch notices and analyze for enforcement action,  

• Conduct strategic analysis of label, packaging, advertising, and promotional materials for proper use of company’s trademarks and copyrights,  

• Collaborate with brand and innovation teams on intellectual property development and management by assisting in identifying patentable inventions, provide background materials, and assist with patent and trademark preparation and prosecution, and 

• Manage, coordinate and communicate with outside counsel and internal stakeholders to ensure efficient IP workflows. 

• Provide litigation support in connection with intellectual property-related matters, including witness interviews, evidence gathering, document review, collection, and production, and coordinating with outside counsel and internal clients. 

• Manage intake of new intellectual property-related contract requests and assist with the preparation and management of intellectual property licensing, coexistence, settlement, and other contractual documents (NDAs, license agreements, letters of authorization, amendments, and other agreements), including reviewing, editing, generating redline comparisons, document formatting, routing to stakeholders for review, coordinating signatures (including use of Adobe Sign), drafting correspondence, tracking review/execution status, and following up on documents. Provide business clients with applicable contract templates. 

• Support the Intellectual Property Team’s day-to-day workflow by creating, collecting, maintaining, inputting, and updating information in the Legal Department’s matter management system and other databases.  

• Track information in various databases and generate reports as needed. Collect data and update relevant information in the matter management system. Generate reports to support day-to-day Intellectual Property Team activity.  

• Develop, monitor, and report on a set of metrics to track Intellectual Property Team matters. Analyze data in connection with Intellectual Property Team performance against applicable metrics. 

• Assist with developing, maintaining, and updating intellectual property portfolio templates and related playbooks. 

• Act as an information source on Adobe Sign and Legal Department and Intellectual Property Team policies and procedures, including advising business clients on applicable processes, approvals, and signature authority. 

• Prepare reference materials, training guides/manuals, presentations, etc. 

• Prepare, process, coordinate, route, track, and follow-up on the execution, notarization, and legalization of documents such as agreements, affidavits, declarations, assignments, and powers of attorney. 

• Work on other Legal Department projects and initiatives and special projects, as directed.  

Core Competencies to be Successful: 

• Professional, positive, can-do attitude  

• Tech-savvy – adept at using Legal Department’s technology tools and superlative knowledge and skills with using matter management and similar electronic systems 

• Exceptional Microsoft Office application skills 

• Strong work ethic 

• Ability to multi-task in a fast-paced environment, including the ability to determine priorities and to timely complete tasks, projects and assignments 

• Commitment to quality including high degree of accuracy and attention to detail. Must be diligent with task follow-up and have the ability to adhere to strict deadlines. Must be committed to ensuring that the Legal Department is providing excellent business focused service with a focus on continued improvement. 

• Excellent communication skills, both written and oral with the ability to communicate well across all levels of the organization. Must have strong ability to work with both internal and external stakeholders. Must be able to identify substantive concerns, provide guidance where appropriate and escalate issues where appropriate. Must be able to think independently to develop and recommend viable solutions to problems and issues. 

• Ability to synthesize large amounts information and communicate guidance in digestible manner 

• Exemplary people skills with ability to build productive working relationships 

• First-rate organizational and time management skills with the ability to multi-task in a fast-paced environment, including the ability to determine priorities and to timely complete projects and assignments 

• Aptitude for identifying and implementing process improvements for work activities 

• Problem solving skills including the ability to identify issues, obstacles and opportunities and then develop and implement effective solutions 

• Mental toughness 

• Ability to work independently and as part of a team 

• Quick study 

Recommended Qualifications: 

• Minimum five years relevant experience in law firm required, experience in corporate legal department strongly desired.  

• Bachelor’s degree required, a Paralegal Degree or Certificate strongly desired.  

• Minimum of 5 years of experience in IP law 

• Proficiency in IP docketing and management software 

• Strong familiarity with state and federal alcohol beverage laws and regulations very strongly desired.  Experience and background in marketing, advertising, trademark and intellectual property law desired.  As importantly, the desire and ability to develop and refine such familiarity into expertise in the areas described above is essential.  

• Experience with contracts that involve intellectual property and other transactional matters. 

• Must be willing to work flexible hours as business needs dictate.  Minimal travel may be required.  

• Extensive Microsoft Office applications (Word, Excel, PowerPoint) and Adobe Acrobat experience and skills including advanced knowledge of settings, document editing, shortcuts, and Excel formulas  

• SharePoint, OneDrive, workflow tool and document management software experience strongly preferred 

ADA Physical/Mental/Workplace Requirements: 

• Must be able to sit and/or stand for long periods of time and work on a computer for extended periods. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.  

• This is a hybrid position working in our Rochester, NY office.