29 August 2023Features

Orrick Herrington & Sutcliffe - US Trademark Rankings 2023

Firm Overview:

Orrick Herrington & Sutcliffe has a team of trial lawyers who specialise in trademark, copyright and media litigation. Orrick’s team has been at the forefront of protecting emerging and famous brands, battling on the front lines of digital distribution wars, and helping its clients maximise valuable non-patent intellectual property. Marketing and content clients have looked to Orrick to navigate industry upheaval where brand recognition is crucial and content is king. The Orrick team has expertise in International Trade Commission (ITC) trademark claims and trade dress claims directed to footwear, following its successful defence of New Balance in similar claims in the ITC filed by Converse.

Team Overview:

Recommended Boston trademark and copyright litigator Mark Puzella protects some of the world’s most powerful brands and emerging technologies. Puzella was lead counsel helping New Balance win a six-month ITC trade dress infringement investigation. In recent years, the team has tried numerous cases to verdict on high-stakes, contentious litigation. Fellow Boston partner David Hosp focuses on trademark, copyright, and media litigation, and in the past two decades, he has represented prominent clients such as New Balance, Samsung, Citizens Bank and Dell/EMC in significant trademark litigations and trials. Other team members in Boston, as well as in the New York and California offices, regularly appear before juries, judges, and courts on complex and high-profile trademark cases around the country.

Key Matter:

  • Orrick defended kitchenware retailer Williams-Sonoma against claims of trademark and trade dress infringement, unfair competition, dilution, and false advertising regarding Nespresso’s coffee capsules and certain single-serve coffee machines in the Southern District of New York. The matter raised unique issues concerning functionality and secondary meaning, settling favourably pre-trial. 
  • Orrick represented lighter manufacturer, Bic, as complainant at the ITC seeking to stop the importation of knockoff pocket lighters infringing Bic’s trademarked design and not meeting safety and quality standards. Orrick won a general exclusion order enabling Bic to coordinate with Customs and Border Protection to bar imports of all infringers, regardless of source. 
  • Orrick partner Robert O’Connell represented New Balance in oppositions to its marks at the Trademark Trial and Appeal Board by SRJ Trademarks and Jingjiang Langzhimeng Shoes & Garment. 

Clients:

Adore Me, Anker Innovations, Bic, CoorsTek, Loeffler Randall, Mahindra & Mahindra, Mahindra Automotive North America, New Balance, Norriseal-Wellmark, Nreal Technology, RTIC, Samsung, Salvestrin Wine, Sazerac, SpareFoot, Williams-Sonoma.