• Gutierrez heads up lean trademark legal team, expands on approach to management
  • Tackling phishing scams requires both online and real world solutions  
  • Company takes a relaxed, and confident, stance on verbification of name

When corresponding over interview times, there’s a slightly longer lag between emails than usual with Rafa Gutierrez, a director of intellectual property at Uber. It’s understandable. He’s meant to be on paternity leave. Still, it hasn’t deterred IP obsessed Gutierrez from chatting trademarks when I call him on an early San Francisco morning.

Founded in 2009, Uber has grown exponentially from its ride-sharing origins. In 2014, the courier service Uber Rush was launched, marking the company’s move towards becoming a logistics company. Now, Uber Eats, its food delivery platform, boasts greater geographic coverage than any of its competitors. This year Uber was a new addition to Interbrand’s top 100 global brands, ranking #87 with a $5.7 billion worth. Naturally, success is not without challenges and with such an astronomical rise, IP-related headaches have followed. “Uber is a household name; everybody has used Uber. So, we see a lot of infringement,” Gutierrez explains.

Gone phishing

Although briefly known as UberCab, the brand Gutierrez has had to protect since 2016 has always been the one-word moniker. Evaluating the threat of potential infringement has a heightened difficulty when the brand name is a known prefix: the original German über means over/above/beyond, while English speakers will also recognise it as a superlative. Naturally, it’s a common addition on brand names. “In any German speaking country, we have to examine potential generic use closely,” Gutierrez concurs. “If it’s a generic use, we leave it alone.”

The tech company has its main presence in the app and online environment, which means that bad actors can seek to capitalise with relative ease: “The barriers to entry for infringement are very low. You set up a domain, a website, a social media profile and use those to steer people to the infringer.”

Faced with a throng of digital exploiters, Gutierrez has found his most worrying adversary to be phishers: “People that set up websites that look like ours, take drivers’ credentials and use those credentials to take money from their accounts – that’s a big concern of ours, and this year we’ve upped our efforts to combat phishing.”

Because phishers target both the array of independent contract drivers and users, Gutierrez has employed vendors for phishing detection and takedown. “Once they spot a phisher, the vendor submits a takedown request.” He notes that, in these efforts, the company’s rate of successful takedowns is around 90%. His team also analyses the data from the vendors “to see if we can spot patterns from large parties if they’re responsible for a large chunk of the infringement”.

Beyond that, Gutierrez also oversees internal awareness among drivers: “We’re looking closely at the data and doing what we can to protect the drivers - communicating to how to spot things and not give out their credentials.”

Another potential risk to the brand comes in the form of genericism. Contra to the legal norm, CEO Dara Khosrowshahi outwardly accepted the verbification of Uber, stating: “Very few brands become verbs; for Uber to have achieved this shows how we’ve captured imaginations and become an important part of our customers’ lives”.

While many legal professionals would bristle at such a statement, Gutierrez isn’t too afraid of genericide either. He notes that Google has a similar common usage – yet its search engine is so popular, it’s rare that people are thinking about, or referring to, a rival engine: “A lot of the time when people use our mark as a verb, it’s not in connection with another ride sharing software, it’s referring to our software or the things that are accessible through our software.”

Decentralised we stand

As the brand has grown to household name status in just ten years, Uber has built up a formidable legal team. Nestled in amongst almost 400 lawyers, Gutierrez’s IP team is comparatively modest. There’s one additional attorney, three full time paralegals and three contract attorneys who are essentially full time. Together they manage a portfolio of almost 2,000 trademark registrations and applications.

To handle the work, the San Francisco based team works with outside counsel, both in the US and internationally. They connect with their foreign counsel through a few US firms, although some of the individual in-house attorneys hire the counsel in foreign jurisdictions. “There’s a fair amount of overlap with what we do, and what our outside US counsel does. They will help with US disputes or foreign disputes and prosecution.”

Inter-department harmonisation is one of the hurdles in such a large operation, Gutierrez says. “Uber is a very decentralised company, so often when we need to get information, we have to start asking around to point to contacts in other departments.” Good relationships and open communication between teams is therefore crucial when working with other legal departments to tackle an IP problem: “We’ll reach out to them and ask if they can help gather evidence in their jurisdiction. We get that info and hand it to our outside counsel.”

IP matters are centralised in Gutierrez’s team. Nevertheless, efforts are made to not accidentally step on anyone else’s toes. “Sometimes we want to take enforcement action but when we consult with our foreign associates, it turns out that in other countries there are different strategies that are worth considering. We’ll consult with a local team, ‘have you heard of this entity?’, ‘should we take action?’.” Although general strategy decisions are made by Gutierrez’s team, he remains open to advice from others: “We don’t want to have gone rogue and take an action that is against what someone would have wanted us to do locally.”

One example of a stakeholder the IP-dedicated team work closely alongside is Uber’s legal marketing department, which liaises directly with Uber’s marketing teams to ensure everything is above board. However, the legal marketing department don’t have the IP expertise of Gutierrez, so there is a need for direct collaboration. “We work with them to develop guidelines which speak to lots of different legal issues, not just IP, they consult with us to make sure they have tight info on how to use Uber’s IP, and what to avoid when working with other parties’ IP.”

An uber-friendly atmosphere

Conducting trademark matters across a huge decentralised company may make communications a little tougher. However, the company still has much of the DNA that defines modern culture conscious organisations. For instance, Gutierrez is quick to bring up the community service aspects of the company.

“We’re all part of a week of service where we’re encouraged to take days off to do volunteering and go out in the community and help at food kitchens and homeless shelters and other facilities that help those with mental illnesses or drug dependencies,” Gutierrez notes. 

These company-led initiatives are also a foundation of Gutierrez’s IP team’s attitudes. Collaboration, generosity, and communication are key principles they adhere to. He adds: “We have regular team events like team dinners where we socialise and talk about things other than work. We also have a fantasy football league, there’s no money, it’s just a bit of fun. We’ve formed strong bonds despite some of us being geographically separated.”

Gutierrez is particularly proud of the IP team for how they give back to the community and help other departments. “They’re constantly stepping in to help out if one person is overwhelmed. Me for example being on leave, they’re really glad to help out,” he explains. It’s evident from his own attitude. Even on his own paternity leave, he’s eager to help out with anyone that might need his expertise.