As the winner of the ‘Intellectual Property Individual of the Year’ at the 2016 Global Counsel Awards, we asked Renee Reuter, intellectual property counsel at Enterprise Holdings, her opinion on what it takes to be a successful in-house counsel, the best way to advise senior leadership and what winning the award meant to her.
Describe your current role (responsibilities, size of team, structure).
My current role is the main adviser to the Enterprise family of companies on all trademark, domain name, copyright and trade secret matters. The organisation has been involved in significant expansion global expansion over the past several years and I support our business teams as they prepare to enter new markets. I also clear new marks for our marketing teams and manage all trademark, copyright and domain name enforcement actions for the organisation. My team files new applications and maintains the domain name and trademark portfolio to support the company’s three famous brands (Alamo, National and Enterprise). In this regard, I manage over 5,000 registered trademarks and 7,000 domain names.
Our in-house trademark team is small, including only one attorney (me) and one administrative assistant (Gail Crosby). We report to Teresa Holderer – vice president and associate general counsel, international – who reports to the general counsel. We are supported by a team of US and international external lawyers and our department is located at the global headquarters of Enterprise Holdings, Inc, in Clayton, Missouri, near St Louis.
What led you to a career in-house?
I joined Enterprise 18 years ago, shortly after I started law school. I attended classes at night and worked full time during the day for the first three-and-a-half years of my career at Enterprise. During that time, I supported another attorney in both IP and legislative matters. Upon graduation, I was hired as the company’s first and only IP lawyer.
In your current role, what is the most challenging situation that you have faced? What are the most significant challenges that in-house lawyers are likely to face over the next few years?
Enterprise has experienced significant growth in the past few years in a variety of ways –geographically, in the number of marks, and in the types of service offerings. The trademark team's biggest challenges are to keep up with the company's growth and work efficiently to effectively protect new marks, as well as old marks in new jurisdictions.
As we now have service offerings in over 80 jurisdictions with corporate stores or franchised locations, we struggle to support increasingly regional advertisement projects. This means that we have to try to get marks cleared and registered as soon as possible in the various jurisdictions of interest.
Are there particular types of legal issues that you routinely refer to outside counsel? And what kind of matters do you tend to handle in-house?
Once an enforcement matter reaches the point at which litigation is expected, I will routinely refer to outside counsel. Also, for matters outside the United States, I rely more heavily on outside counsel. For other matters, the use of outside counsel will depend on my current workload.
What do you consider to be the essential qualities for a successful in-house lawyer?
The essential qualities of an in-house lawyer are consistency, integrity and creativity. With respect to consistency, it is important for in-house lawyers not just to advise clients on specific issues, but also to explain the reasons behind this advice. Over time, if you are consistent in how you analyse repetitive issues, your clients will come to expect and predict how you might respond to some of their questions and concerns. Consistency builds trust and increases client comfort. With respect to integrity, again because trust between in-house counsel and clients is important for long-term success, in-house counsel should always act with the utmost integrity. Some say that integrity is doing the right thing when no one is looking. That is true, but often even when you think no one is watching, your actions do convey a message: make sure that message is a positive one, which serves you and your company well. With respect to creativity, because IP counsel works so closely with developers and marketing professionals (who are, by their nature, creative), being creative can help you bond with clients and help them to reach their goals. For example, sometimes when we are trying to clear a new mark, I will make suggestions for small changes to a proposed mark which will lessen or eliminate the risk of an objection from third parties. It is always easier to make a positive suggestion as to how a common goal can be accomplished in a way that limits risk than to just say “no”.
What’s important for in-house counsel to consider when advising senior leadership?
When advising senior leadership, it is important to deliver advice in the most efficient and effective manner. Consider the words used, the length of the message and the delivery method. Senior management are not generally interested in scholarly descriptions of legal risks or opportunities. Instead, they are interested in getting straightforward honest and practical answers to questions and concerns, often as quickly as possible. If no easy answer is available, do not be afraid to say so. With each response, always provide a few options for future action along with your recommendation. And always be prepared to answer the question “Why do you recommend this?”
How does the legal department contribute to your company’s growth?
The legal department assists the business from the earliest stages of expansion into new markets. Hence, we do contribute to the company’s growth.
With regard to your industry, are there any significant developments worth highlighting?
None that I can discuss at this time.
If not a lawyer, what would you be?
If not a lawyer, I would likely run for election for a full-time position. For the past six years I have served in a part-time capacity as a local legislator, as chair of the county council in Jefferson County, Missouri. I love serving and helping others, and elected officials get to do this every day.
What did winning a Global Counsel Award mean to you?
It was really nice to be recognised by those who work with me on various issues around the world. So often, my team tends to close one file and rush to work on the next matter without taking time to reflect and celebrate what has been accomplished. Being shortlisted for the Global Counsel Award encouraged me to stop and take time to celebrate accomplishments in a new and unexpected way. Actually winning the award provided wonderful recognition both within the IP community and internally within my company. In-house counsels are rarely recognised by award programmes, so the Global Counsel Awards are unique and quite special. I am grateful to have been nominated, shortlisted and awarded this honour.
The purpose of the Global Counsel Awards is to identify those in-house counsel, both teams and individuals that excel in their specific roles. The primary aim is to reward lawyers for demonstrable achievements across the full spectrum of in-house responsibility, not simply those who have acted on high-profile transactions. To make a nomination for the 2017 awards please click here.
For further information on the awards, please visit www.globalcounselawards.com.