Legal Counsel - Intellectual Property & Transactions

Reports to Associate General Counsel/Director of Transactions and Litigation but works with all lawyers in the Legal Department.  This team member will provide strategic intellectual property portfolio management of the Company’s trademarks, working with the marketing, merchandising and professional sales teams to develop and implement protection strategy of corporate and brand marks and overseeing and coordinating with outside counsel to execute on that strategy.  This team member also will provide legal review, drafting, analysis, editing and negotiation as required of all vendor and merchandising contracts, work in conjunction with the business teams seeking contract engagement with vendors and suppliers, and assess and advise on risk and steps to mitigate exposure while achieving the Company’s business objectives. This team member will manage numerous matters simultaneously in a deadline-driven retail environment.

ESSENTIAL JOB FUNCTIONS

· Oversee management of the Company’s international intellectual property portfolio, including:

· Work with business stakeholders and outside counsel to develop and execute a comprehensive strategy for maintenance, renewal and protection of Company trademarks and word marks;

· Conduct or oversee trademark clearance searches for new brand names, slogans, and marketing campaigns to ensure avoidance of infringement;

· Manage and oversee trademark registrations, application filings and responses to office actions;

· Actively monitor market, online marketplaces, social media, etc. for infringing use of Company marks;

· Manage and oversee enforcement of Company marks;

· Collaborate with applicable customs officials and programs to protect against importation of counterfeit goods;

· Draft, negotiate and review trademark licensing agreements and trademark assignment agreements;

· Conduct IP due diligence for acquisitions and other strategic transactions, including evaluating the IP portfolios of potential acquisition targets and partners;

· Supervise trademark docketing to ensure deadline compliance;

· Work with business stakeholders to ensure proper trademark usage across the enterprise, including ensuring compliance with IP laws and regulations and developing IP policies and procedures to mitigate legal risks and providing training to team members regarding the same;

 INTELLECTUAL PROPERTY DUTIES

• Oversee management of the Company’s international intellectual property portfolio, including:
• Work with business stakeholders and outside counsel to develop and execute a comprehensive strategy for maintenance, renewal and protection of Company trademarks and word marks;
• Conduct or oversee trademark clearance searches for new brand names, slogans, and marketing campaigns to ensure avoidance of infringement;
• Manage and oversee trademark registrations, application filings and responses to office actions;
• Actively monitor market, online marketplaces, social media, etc. for infringing use of Company marks;
• Manage and oversee enforcement of Company marks;
• Collaborate with applicable customs officials and programs to protect against importation of counterfeit goods;
• Draft, negotiate and review trademark licensing agreements and trademark assignment agreements;
• Conduct IP due diligence for acquisitions and other strategic transactions, including evaluating the IP portfolios of potential acquisition targets and partners;
• Supervise trademark docketing to ensure deadline compliance;
• Work with business stakeholders to ensure proper trademark usage across the enterprise, including ensuring compliance with IP laws and regulations and developing IP policies and procedures to mitigate legal risks and providing training to team members regarding the same;

TRANSACTIONAL DUTIES

• Draft, review, edit and negotiate a broad range of commercial agreements including first-party paper agreements such as Supplier Agreements, NDAs, Trademark Licensing Agreements, and Settlement Agreements, as well as third-party paper agreements such as vendor contracts, MSAs, SOWs, SaaS agreements, software licenses, sponsorship agreements, platform agreements, and consulting and professional services agreements;
• Maintain, draft, update and standardize, as necessary, Company forms, templates, terms, and conditions, include good, better, best fallback positions for use across business functions;
• Provide clear, practical, business-oriented legal advice to business stakeholders regarding contract structure, legal exposure, risk allocation and mitigation, operational requirements and dispute avoidance and explaining complicated legal concepts;
• Work closely with business stakeholders including merchandising, supply chain logistics, marketing, IT, finance, HR, store operations, DC operations and other departments to support strategic and day-to-day commercial initiatives;
• Assist business stakeholders in managing contracts through lifecycle including, negotiation, approvals, escalation, execution, amendments, renewals, notices and termination;
• Draft and review both internal and customer facing terms, website and app terms, marketplace terms, promotional terms, loyalty program terms and conditions, and related disclosures;
• Spot and escalate where necessary issues involving privacy, cybersecurity, employment, real estate, tax, regulatory compliance, customs and trade, consumer protection and competition law and coordinate with the various business stakeholders to ensure compliance and risk mitigation;
• Provide and deliver appropriate contract related training to business stakeholders related to contract processes, template usage, approval requirements, signatory authority, key legal terms, common areas of risk and negotiation standards;
• Identify, develop and refine contracting workflows, intake processes, approval matrices, clause library, legal playbooks and contract management practices, including CLM implementation.

SKILLS/EDUCATION/KNOWLEDGE/EXPERIENCE/ABILITIES

Required:

· JD from an ABA accredited law school

· Active and in good standing with at least one State Bar

· 8+ years of legal experience, including at least 5 years in intellectual property law in an in house or law firm setting

· Strong analytical, problem solving, and evaluation skills

· Excellent interpersonal and communication skills

· Strong legal acumen with the ability to demonstrate sound judgment

· Willingness to tackle matters in and outside areas of expertise with a can-do attitude, understanding that no job is too big or too small

· Ability to work independently as well as collaboratively with business teams

· Ability to manage and prioritize tasks in a dynamic, fast-paced, and often deadline-driven environment and adapt quickly to changing priorities and legal and regulatory environments

· Excellent negotiation skills

· Outstanding attention to detail and accuracy

Desired:

·         In-house legal experience

·         Transactional experience

·         Licensed to practice before the U.S. Patent and Trademark Office

·         Experience in managing an international intellectual property portfolio

·         Commercial litigation experience

O’Reilly Auto Parts has a proven track record of growth and stability. O’Reilly is full of successful career stories and believes in a strong promote-from-within philosophy, encouraging you to grow your career along with the organization. 

Total Compensation Package:

• Competitive Wages & Paid Time Off

• Stock Purchase Plan & 401k with Employer Contributions Starting Day One

• Medical, Dental, & Vision Insurance with Optional Flexible Spending Account (FSA)

• Team Member Health/Wellbeing Programs

• Tuition Educational Assistance Programs

• Opportunities for Career Growth

O’Reilly Auto Parts is an equal opportunity employer. The Company does not discriminate on the basis of race, religion, color, national origin or ancestry (including immigration status or citizenship), sex, sexual orientation, gender identity, pregnancy (including childbirth, lactation, and related medical conditions,) age (40 and over), veteran status, uniformed service member status, physical or mental disability, genetic information (including testing or characteristics) or another protected status as defined by local, state, or federal law, as applicable.

Qualified individuals with a disability may be entitled to reasonable accommodation under the Americans with Disabilities Act. If you require a reasonable accommodation during the application or employment process, please send an email to: rar@oreillyauto.com or call (800) 471-7431 option , and provide your requested accommodation, and position details.