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Practice:

  • Trademark, Copyright & Media
  • Propriété intellectuelle

Robert M. O'Connell Jr. Of Counsel

Boston

His experience includes clearance, registration and protection of trademarks, trade dress and designs; opposition and cancellation proceedings in the TTAB; UDRP and other domain name proceedings; registration and protection of copyrights; negotiation and drafting of a variety of coexistence, licensing and other IP-related agreements; and providing IP support on various M&A and financing transactions, most recently including a groundbreaking series of securitization deals involving music and television rights involving household-name artists.

Businesses ranging from small start-ups to multi-billion-dollar corporations turn to Bob for help developing and implementing cost-effective domestic and global branding and trademark protection plans. They hail from the financial services, food & beverage, apparel, retail and pharmaceutical industries, among others.

Bob’s significant transactional experience includes a trademark and merchandise license agreement for a large resort casino in Las Vegas, and naming rights and sponsorship agreements for a major league sports stadium and a prominent performing arts center.

He also has extensive commercial litigation and dispute resolution experience in both intellectual property and other matters in state and federal trial and appellate courts, in inter partes and appellate matters before the Trademark Trial & Appeal Board, and in UDRP arbitration proceedings. Noteworthy reported cases include: Coach Services, Inc. v. Triumph Learning LLC, 96 U.S.P.Q.2d 1600 (TTAB September 17, 2010) affirmed, 668 F.3d 1356 (Fed. Cir. 2012).

In the 2023 edition of World Trademark Review 1000, a listing of the world’s top trademark practitioners based on peer and client surveys, Bob received top-tier rankings for trademark prosecution and strategy with clients praising him for his “pragmatism, calmness, under pressure and fine-grained, detailed work product. Previously, WTR 1000 reported that Bob “wins effusive praise for his “pragmatic approach and unparalleled attention to detail.” “Simply stated, he is among the most cost-effective, business-oriented lawyers in any specialty.” “He is of incredible value – he matches anybody on expertise and exceeds most, if not all, on responsiveness and efficiency.” In prior years, WTR 1000 reviewers have said: “He never fails to address domestic and global branding issues quickly and comprehensively, causing one client to profess: ‘He is the only lawyer that I would use for trademark work in the Boston area.’” Bob has been characterized as a “distinguished” and “highly respected practitioner” with “a great reputation” in multinational mandates, who is “a trusted adviser in helping to build value in…brands” and “commands respect” particularly in the strategy and commercial field.” He has been listed in WTR 1000 each year since its inaugural edition in 2011, as well as WTR’s Global Leaders short-list since 2019.

Noteworthy past and present client engagements include:

  • A famous sports footwear and apparel brand with trademark enforcement and opposition matters;
  • The world’s largest retailer with trademark clearance matters across several business lines, as well as complex trademark prosecution and TTAB matters;
  • A “super-regional” bank with a portfolio of hundreds of federal and state trademarks and an active TTAB and UDRP enforcement program;
  • A global spirits company with hundreds of brands and an extensive enforcement docket;
  • A leading global private equity firm;
  • A national women’s apparel retail chain with stores across the United States and Canada; and
  • A branded pharmaceutical company with pioneering products for both human and veterinary medicine.

George Pothoulakis Partner

Boston

George is specialized in all areas of general corporate/securities law and in a wide variety of transactions (ex. venture financings, secondary offerings, redomestications, M&A and public offerings). His practice spans the entire corporate lifecycle, from inception to exit/liquidity, and includes the representation of companies and investors from various industries (ex. life sciences, health tech, energy tech, A.I, machine learning, robotics and blockchain). 

In addition to his extensive experience in private practice, George previously served as the lead lawyer of Boehringer Ingelheim's U.S.-based venture fund, where he oversaw and supported all legal aspects of the venture fund's investment activities in the United States and Canada.  During his time there, George also supported the venture fund's parent pharma company as lead counsel in several global financing and M&A transactions.

Practice:

  • Trademark, Copyright & Media
  • Propriété intellectuelle
  • U.S. International Trade Commission
  • Procès

Mark S. Puzella Partner

Boston

As a trial lawyer, Mark excels at handling accelerated, complex cases. For example, as lead counsel for New Balance, Mark won a swift six-month International Trade Commission (ITC) investigation concerning claims of trade dress infringement. And, as lead plaintiff counsel for Explorica in a trademark case, he won a jury verdict just ten weeks after filing the complaint. During that short span, the parties engaged in complete discovery, including taking and defending numerous fact and expert depositions. Clients routinely ask him to take over matters at the close of discovery, prior to trial, or on remand, which presents unique challenges and time constraints.

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, he 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.

Mark draws upon his litigation experience to help clients anticipate and avoid legal issues related to new technologies and brands. Mark has advised numerous technology and media companies on the creation, use, and delivery of content and helped clients assess whether their products will withstand investor and competitor scrutiny. He also has significant experience advising on branding and re-branding projects, including private brand or store brand clearance and risk assessments.

Mark’s exceptional record has earned him praise as a problem solver from client and peer surveys. Most recently, Chambers USA described him as "extremely skilled and effective." World Trademark Review 1000 has called him “intelligent, thoughtful and client-oriented” and “incredibly impressive.” The Legal 500 has described him as a “smart, creative” trial lawyer who “anticipates everything.” And in 2016, IP Law360 named two of his cases among the top ten trademark decisions of the year.

410081

Practice:

  • Technology Transactions
  • Strategic Advisory & Government Enforcement (SAGE)

Taylor Ranfos Associate

Boston

Taylor represents clients at all stages of their life cycles and in a variety of technology and science-driven industries, including cleantech, SaaS, gaming, energy, hardware, entertainment, Internet, media, semiconductor and media.

Taylor has experience drafting commercial, licensing and other intellectual property and technology agreements. She also assists clients with intellectual property issues in connection with a range of large commercial transactions, including mergers and acquisitions and strategic investments

Practice:

  • Propriété intellectuelle
  • Patents
  • Life Sciences & HealthTech

Carly Romanowicz Senior Associate

Boston

Carly is a Boston-based senior associate and litigator in our Intellectual Property group. Carly’s practice focuses on patent infringement litigation in federal district courts involving pharmaceuticals, medical devices, and biologics. She has a background in biomedical engineering, including medical device research & design, academic research, and business management.

Practice:

  • Technology & Innovation Sector
  • Technology Companies Group

Chapin Scaggs Managing Associate

Boston

Chapin focuses on representing high-growth technology companies of all sizes throughout their life-cycles-- from general formation and corporate governance through to venture capital and private equity financings.  He also advises investors and venture capital firms in their investments in early and high growth technology companies.

448119

Practice:

  • Life Sciences & HealthTech
  • Technology Transactions
  • Technology Companies Group
  • Private Equity
  • Mergers & Acquisitions
  • Strategic Advisory & Government Enforcement (SAGE)

David Sharrow Partner

Boston

David brings a wealth of expertise, focusing on diverse cutting-edge technologies, including life sciences (biotechnology, pharmaceuticals, medical devices, digital health, genomic technology), fintech, artificial intelligence, information technology (hardware, software, SaaS, and database solutions), edtech, renewable energy, sustainable technologies, AR/VR and cybersecurity.

He advises clients on corporate partnerships, strategic alliances and licensing agreements with leading U.S. and global entities, as well as major research universities and institutes. His experience includes navigating the IP and technology aspects of venture capital financings, public offerings and some of the largest M&A transactions involving venture-backed companies.

David has lectured at major institutions, including Tulane, Yale, Princeton, NYU, Columbia, Cornell and Fordham.

453705

Practice:

  • FDA & Healthcare Regulatory
  • Life Sciences & HealthTech
  • Strategic Advisory & Government Enforcement (SAGE)
  • Technology Companies Group
  • Technology & Innovation

Jeremy D. Sherer Partner

Boston

Jeremy advises clients on the full range of regulatory health care issues facing digital health stakeholders. His depth and breadth of experience enables him to help established and early-stage companies navigate a complex and ever-changing business and regulatory landscape. As one client’s CEO explained, “Jeremy is one of the best thought partners, and hands down the best legal navigator, I’ve found in the digital health space.”

His telehealth experience includes advising on compliance with state licensure requirements for physicians and non-physician practitioners, corporate practice of medicine issues, remote prescribing (including controlled substances), patient consent and Medicare, Medicaid and commercial reimbursement. He advises clients on compliance with laws against fraud and abuse, including federal and state anti-kickback and self-referral laws, as well as privacy issues arising under HIPAA and its state-level counterparts.

Jeremy has substantial experience pertaining to structuring, operationalizing and scaling “PC-MSO” arrangements across all 50 states. He also advises venture capital and private equity firms conducting regulatory diligence associated with investments in digital health and health care technology ventures, from seed stage funding to nine-figure raises.

Practice:

  • Cyber, Privacy & Data Innovation
  • Propriété intellectuelle
  • Trade Secrets Litigation
  • Strategic Advisory & Government Enforcement (SAGE)

Caroline Simons Partner

Boston; New York

Tech and consumer-facing clients – from early-stage startups to some of the most recognizable online companies – turn to Caroline to protect their IP, brand, and reputation in litigation. Her expertise includes the fast-evolving areas of Section 230 of the Communications Decency Act and online safety, cybersecurity & data privacy litigation. In the past year, she has litigated more than 60 cases related to platform immunity and she is currently lead counsel in dozens of cases for one of the world's largest tech companies on claims challenging myriad aspects of its online services, including content moderation and product design.

A partner to her clients in crisis management, Caroline also advises them in cyber incident response, government and internal investigations and enforcement actions. Her experience at the intersection of online safety, IP and white-collar litigation gives her breadth of perspective and allows her to work with her clients to problem-solve and effectively manage enterprise risk. Clients appreciate Caroline's ability to collaborate with witnesses, company stakeholders and factfinders – both inside and outside the courtroom – to achieve meaningful results.

Caroline maintains an active pro bono practice, representing clients in Hague proceedings as well as children and refugees in asylum proceedings in conjunction with the Political Asylum / Immigration Representation (PAIR) Project. She has drafted amicus briefs in cases pending before the U.S. Supreme Court and U.S. Circuit Courts of Appeals in the areas of technology, criminal justice, and reproductive rights.

Practice:

  • Propriété intellectuelle
  • Trademark, Copyright & Media
  • Trade Secrets Litigation
  • U.S. International Trade Commission

Ashlie J. Smith Senior Associate

Boston

Ashlie grew up in a family of restaurant franchisees, and she learned about the power of a strong trademark at a young age. This understanding led her to pursue a career in trademark and copyright law, and from her start as a trademark prosecution intern at Hewlett Packard Enterprise in law school, through her work in trademark and copyright litigation at Fish & Richardson P.C., her practice has always focused on assisting businesses with their intellectual property needs.  

Ashlie’s practice at Orrick focuses on domestic and international trademark and copyright prosecution and counseling. She has experience assisting businesses ranging from small start-ups to multi-billion dollar corporations with trademark clearance, protection, and strategy. Additionally, Ashlie has extensive experience in intellectual property litigation in federal district courts and at the International Trade Commission. Because of her wide-range of experience, she brings to each matter a unique understanding of the intersection of copyright and trademark clearance and prosecution and enforcement and litigation.      

740

Practice:

  • Finance Sector
  • Technology & Innovation Sector
  • Cyber, Privacy & Data Innovation
  • Class Action Defense
  • White Collar, Investigations, Securities Litigation & Compliance
  • Investigations internationales et mesures d'application
  • Procès
  • Strategic Advisory & Government Enforcement (SAGE)

Aravind Swaminathan Partner

Seattle; Boston

As a strategic cybersecurity advisor, Aravind partners with clients to proactively plan for a crisis and develop strategies to improve resiliency, respond efficiently and effectively, protect their business and brand, and defend them in the onslaught of litigation and enforcement actions that follow. He guides organizations from large public company financial institutions to start-up technology companies to critical infrastructure providers through incidents, and develops business- and brand-centric strategies to mitigate and manage risk. He has directed more than 200 cybersecurity incident and data breach investigations, including enterprise-wide network intrusions to cyberattacks with national security implications. 

With extensive trial, litigation and appellate experience, he defends his clients in cyber, privacy, and payments related class actions and other civil litigation (particularly Computer Fraud and Abuse Act matters), and in when these issues lead to regulatory investigations by the SEC, DOJ, FTC, and State Attorneys General.   

Aravind’s background as an Assistant United States Attorney and Computer Hacking and Intellectual Property Section attorney gives him first-hand understanding of federal agencies that allows him to swiftly navigate the system, partner with investigators and find creative solutions for his clients. As a federal cybercrime prosecutor, Aravind investigated and prosecuted a broad array of cybercrime cases, including hacking, phishing, trade secrets theft, click fraud, cyber threats, and identity theft. Aravind also led the cybercrime outreach program, where he worked with members of the Department of Justice, state and federal regulators, law enforcement and other organizations on cybersecurity and related privacy issues. During his time as federal prosecutor in the Complex Crimes Unit, he also investigated and prosecuted a wide array of white-collar crimes, including investment schemes, corporate fraud and embezzlement, securities fraud, tax evasion and the nation’s largest bank failure.

Practice:

  • Technology & Innovation Sector
  • Capital Markets
  • Gouvernance d'entreprise
  • Technology Companies Group
  • Life Sciences & HealthTech
  • Mergers & Acquisitions
  • Special Purpose Acquisition Companies (SPACs)

Albert Vanderlaan Partner

Boston

Albert is involved in a broad range of corporate legal engagements for high growth technology companies, including IPOs, follow-on public offerings, private and public company securities law compliance matters, public company disclosure obligations, venture financings, mergers and acquisitions,  de-SPAC transactions and SPAC IPOs. He also regularly advises public and private companies and their boards of directors on corporate governance issues.

Albert's clients include public and private companies in technology, energy, automotive, Internet related industries, real estate, finance and the life sciences (including, among others, immuno-oncology, gene therapy, restorative cell therapy and medical device companies). He also represents underwriters in initial public offerings, follow-on offerings and PIPE offerings and venture capital firms in a variety of investment transactions.

Albert was named to the Deal’s Top Rising Stars 2021 list, which recognizes top new partners at U.S. law firms who are “doing spectacular work in the field of deal-making and who have continued to progress in their career despite the obstacles put in front of them.”