Orrick, Herrington & Sutcliffe

Firm overview:

Orrick, Herrington & Sutcliffe is a US firm which has grown to offer a broad global presence. With roots in California’s Gold Rush era, Orrick has grown to become a respected, full-service firm with a modern outlook.

Orrick works across more than 25 markets in the US, Europe and Asia, within which it operates 15 US offices. The firm focuses on representing clients in technology, financial services, energy, life sciences and healthcare sectors.

Orrick is among the few US firms with a nationwide team of widely recognized trial lawyers who specialise in trademark, copyright, and media litigation. Trademark professionals manage thousands of trademarks for hundreds of clients across many industries.

The trademarks team has tried numerous cases to verdict in high-stakes, contentious litigation. With first-chair trial lawyers in Boston, New York, and California, attorneys appear regularly before juries, judges, and courts that see some of the most complex and high-profile trademark and copyright cases around the country.

In addition to its district court practice, the Orrick team has a high level of non-patent experience in the International Trade Commission (ITC). In one investigation, the Orrick team played a key part in developing the legal standard for secondary meaning at the Federal Circuit, which is now used as key precedent. In another, the Orrick team were pioneers in the ITC’s interim ID pilot programme, and successfully obtained clearance for a client’s redesign through expedited modification proceedings before the ALJ and the full Commission.

Team overview:

Boston-based Mark Puzella (Highly Recommended, Contentious)) is widely regarded as a leading trial lawyer. Clients (of whom many are high-profile brands) routinely turn to Puzella to take over matters at the close of discovery, prior to trial, or on remand.

Notable matters include an investigation at the International Trade Commission (ITC), in which Puzella was lead counsel for New Balance, for which he won a swift six-month investigation concerning claims of trade dress infringement.

He is also skilled at explaining complex concepts and technology to judges and juries in a persuasive, intelligible style. For example, in the high-profile Supreme Court case ABC v Aereo, Puzella led the trial and appellate team’s presentation of the key technology. That presentation was the basis of the trial court’s denial of a preliminary injunction, and the Second Circuit’s affirmance of that decision.

Puzella also represents Pegasystems in the false advertising and defamation litigation against Appian.

Other significant partners in the trademarks team are co-chair of Orrick’s IP litigation practice, Sheryl Koval Garko; and partner David Hosp.

Key matters:

• Nespresso US v Williams-Sonoma, Case No. 1:19-cv-4223, Southern District of New York
  Orrick defended Williams-Sonoma against claims of trademark and trade dress infringement, unfair competition, dilution, and false advertising regarding Nespresso’s coffee capsules and some of its single-serve coffee machines. The matter raised unique issues concerning functionality and secondary meaning. It settled favourably prior to trial. Counsel for Nespresso was Mayer Brown.
• BIC v various respondents, ITC
  An Orrick team represented BIC as a complainant in the International Trade Commission (ITC) seeking to stop the importation of knock-off pocket lighters that it alleged to infringe BIC’s trademarked design, and did not conform to its safety and quality standards. Orrick won a general exclusion order prohibiting the importation of the accused products. The team also pursued a general exclusion order to help BIC prevent a ‘whack-a-mole’ problem of more infringers ‘popping up’. The general exclusion order enables BIC to coordinate with Customs and Border Protection to bar all infringing imports, regardless of source.

Clients:

Anker Innovations, Adore Me, Nreal Technology, a confidential aircraft investments company, Coorstek, New Balance, Mahindra & Mahindra, Salesforce, Urban Zen by Donna Karan, Viking River Cruises, Beyond Meat, Asana, Stoller Vineyards, Polar Beverages.