In-House Counsel of the Year: Elena M Grimme

HGF’s Jason Lumber presents the award to Elena M Grimme

In May, Elena M Grimme transitioned from her role as assistant general counsel, trademarks, to assistant general counsel, consumer and device sales at Microsoft. Previously, she spent over a decade in IP-focused roles at the technology giant and as head of the trademark group.

Shortly after receiving the In-House Counsel of the Year award, Grimme spoke to World Trademark Review to provide insight into how Microsoft approaches trademark operations and her own leadership philosophy.

Could you tell us how Microsoft’s trademark team is structured and the nature of the portfolio it oversees?

The trademark team at Microsoft is composed of attorneys, paralegals and programme managers who support a global trademark portfolio of approximately 500 brands and 16,000 filings. All trademark-related work is centralised with the team at our headquarters in Redmond, which deals with all aspects of trademark clearance, counselling, prosecution, enforcement and conflict management.

The Microsoft trademark portfolio is quite broad in terms of the products and services it covers – our business stems from the operating system and application software business, which we are traditionally known for (think Windows and Microsoft Office), to cloud services and solutions (Microsoft Azure), communication and collaboration tools (like Skype and Microsoft Teams), computer devices (eg, Microsoft Surface), gaming consoles (Xbox) and games (such as Minecraft and Halo). Some of the businesses may face intense counterfeiting challenges (like Minecraft and other popular games), while others entail a whole different level of complexity when it comes to trademark clearance.

The key for each team member is to gain a deep understanding of the businesses they support and to tailor our trademark practice, where necessary, to best enable our business and company goals.

In leading the team, what is your personal management philosophy?

I believe a crucial aspect of successful leadership is the curation of team culture. As our CEO Satya Nadella says, “if you don’t focus on creating a culture that allows people to do their best work, then you’ve created nothing”. I strive to use communication, transparency and empowerment as the foundation of the team culture. What excites me the most as a manager is achieving an inclusive, energetic and trusting environment, where every team member feels part of a whole.

For those embarking on an in-house career in trademarks, what is the one piece of advice you would give them?

Be willing to let go of absolutes. Too often as legal professionals we view things as either right or wrong. Many legal professionals struggle with ambiguity, and yet when you enter the corporate environment ambiguity is the norm. So you will inevitably be questioned in how you view the legal risk of specific scenarios, and how you apply the legal construct to your company’s factual circumstances.

You will also be challenged in what the actual value of the trademark practice is – do we really need to enforce – and how extensively? Do we really need to seek trademark registrations in every scenario? And what is the actual value of policy and advocacy work? All these challenges are not easy but you will come to realise that if you allow yourself to question your absolutes, these are healthy exercises that will ultimately lead you to a more efficient, focused and impactful trademark practice.

How do you relax away from the busy world of legal work?

When I have the time, I love to cook. I also enjoy skiing and playing tennis, when the Seattle weather – and my very active 1.5 year old daughter! – permit it. I actually just recently moved to a new role within the Microsoft legal department, leading our consumer and device sales legal team. It was very hard for me to leave the wonderful world of trademarks, and I look forward to maintaining as many connections as I can. The current world of sales is definitely more demanding from a time management perspective, so I will have to find more ways to relax!

Other nominees:
  • Patrick Flaherty, Verizon Communications

  • Kat Johnston, Facebook

  • Dana Brown Northcott,

  • Nicholas Studler, Lindt & Sprüngli AG

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