Position: Legal Counsel
Location: Shelton, CT
Description: The Legal Counsel position delivers timely, independent and practical advice and counsel to BIC’s U.S., Canada and Global Lighter teams regarding marketing, advertising and promotional matters, including packaging & labeling, claim substantiation, sweepstakes, contest, promotion design and compliance. This position is responsible for drafting, reviewing and negotiating a broad range of commercial agreements in support of the business including those relating to sales, marketing & advertising, content licensing and influencers.
The Legal Counsel also has U.S. and Canada brand IP responsibilities including advising clients and cross-functional teams on trademark and copyright aspects of commercial transactions and business strategies.
This position has responsibility for evaluating legal risks and advising the company to protect against liabilities while helping to drive the business as well as analysing and providing strategic guidance to the internal teams regarding the business impacts and opportunities arising from various emerging laws and regulations including those impacting alternative markets.
- Collaborating with and overseeing the work of the North American trademark paralegal to clear trademarks for use, review and analysis of trademark searches, prepare trademark applications, draft responses to office actions, cancellations and similar proceedings, develop evidence of use, and obtain registrations and renewals of trademarks and manage the North America trademark portfolio in consultation with the Global trademark team.
- Evaluate, handle in-house and manage outside vendors in brand protection and trademark enforcement activities including cease and desist letters, e-commerce and social media platform take-down requests, URDP’s and other URL proceedings and counterfeit actions in coordination with the Global trademark team.
- Advise the business on all matters relating to copyrights and trademarks including trade dress.
- Drafting and negotiating brand license agreements for use of third party brands and designs in connection with BIC’s products.and providing strategic advice to internal business clients on building and managing the brand licensing program.
- Review, analyze and provide counsel to the U.S. and Canada Lighter teams regarding product packaging, marketing promotions and activations (e.g., packaging & labeling requirements, promotional videos, contests, sweepstakes, influencers, experiential tours, coupons, rebates, product claims, brand and ecommerce websites and mobile applications). Review and provide timely and practical guidance relating to promotion concepts, creative and all forms of external advertising (e.g. print, digital and social media posts).
- Conduct/prepare trademark diligence for acquisitions and divestitures.
- Review, drafting, and negotiation of various types of commercial agreements for the Lighter Business Unit to facilitate sales and marketing programs and to drive business while simultaneously protecting the company’s interests and brand. These various types of commercial agreements include brand license agreements, agreements for various sales and marketing programs, vendor and service agreements.
- Analyze, inform and provide strategic guidance to the internal teams regarding the business impacts and opportunities arising from various emerging laws and regulations including those impacting alternative market channels and the legalization of cannabis.
- People Development: Assist in the development of and provide coaching to paralegals; provide training for clients and prepare and update client reference guides and materials.
- Juris Doctor (J.D.) and member of Connecticut and/or other state bar in good standing.
- 3-5 years practicing trademark & marketing law in an in-house or law firm setting with significant experience drafting and negotiating agreements.
- This position requires excellent written and oral communication skills; strong contract review, drafting and negotiation skills; effective interpersonal and organizational skills; ability to take on significant responsibilities and work well under pressure and on multiple projects. This position must possess an appreciation of business objectives and challenges and the ability to clearly translate legal terms to effectively communicate the legal issues that affect business opportunities. Continuing education will be necessary in relevant areas of trademarks, social media, advertising, promotion and marketing laws, regulations, government guidelines and emerging laws and regulations that impact the business including the legalization of cannabis. Some travel (including international) required.