Webinar | May.13.2021 | 3pm - 4pm (Eastern Daylight Time)Online Webinar
Orrick and Berkeley Center for Law & Technology are co-hosting The CASE Act and the Trademark Modernization Act Webinar: New Opportunities and Risks for Companies and Brands on May 13, 2021.
In this robust discussion, Orrick’s IP Team members Sheryl Garko, Bob O’Connell and Caroline Simons are joined by Stacey Lantagne, Associate Dean for Faculty Development at University of Mississippi School of Law, and Erin Michael, Senior Counsel at New Balance. The panel will discuss the debate over what the new Copyright Claims Board should look like, the enshrining of the presumption of irreparable harm for Lanham Act claims, new expungement and re-exam proceedings under the Trademark Modernization Act, and what all this means for companies and brands looking to adjust their strategies to enforce their IP (or defend themselves from plaintiffs now equipped with new arrows in their quivers).
MCLE Credit is pending.
Sheryl Koval Garko is an experienced trial lawyer who focuses on high-stakes intellectual property litigation. Clients hire Sheryl for her creative, strategic, business-focused advice enriched by her extensive courtroom experience and working knowledge of a wide range of technologies.
Over the course of her career, she has represented clients ranging from Fortune 50 companies to start-ups in trademark, copyright, false advertising, and trade secret litigations and at trial. She has worked with leading technology companies and some of the most recognizable brands in the world, including New Balance, Samsung, and Microsoft. She has tried cases to both judges and juries in federal courts across the United States and is experienced practicing before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board and the International Trade Commission. Through her trial work, she has developed deep expertise in litigating novel and complex damages issues in IP cases and leveraging survey work.
Sheryl honed her skills in high profile, precedent setting cases. She represented New Balance at trial in the International Trade Commission in the successful defense of trade dress claims brought by Nike/Converse in a case that IP Law360 named it the top trademark ruling of 2016. Sheryl also represented Aereo against the major U.S. television networks in defense of its novel, industry-disrupting system for providing internet access to over-the-air broadcast television. That case ultimately went to the Supreme Court, which addressed copyright law issues of first impression.
Having prepared countless cases for trial, Sheryl has a clear understanding of the importance of identifying litigation strategy early on to direct the case in a cost- effective and efficient manner. Sheryl also leverages her wealth of experience to counsel clients on strategies to protect intellectual property when avoiding litigation is a strategic business priority.
Having also litigated a number of patent cases throughout her career, she brings to each matter a unique understanding of the intersection of copyright, trademark, trade secret and patent law. A superb communicator, she is able to explain diverse areas of complex technology to a judge or jury.
Sheryl has been consistently named as one of the leading intellectual property litigators in the world by World Trademark Review 1000, a peer and client survey. In its 2017 publication, WTR 1000 described her as "'highly recommended’ for her ‘helpful and creative advice,’ which is ‘always of first-rate quality.’” In the 2018 edition, WTR 1000 stated that Sheryl “offers significant firepower to any contentious mandate.” Most recently, in the 2021 edition, WTR 1000 said Sheryl "puts her heart and soul into driving favourable outcomes."
Sheryl is the Global Chair of Orrick's Women's Initiative and serves on the firm's Management Committee.
She was named a 2017 Woman Worth Watching by Profiles in Diversity Journal. Sheryl was also singled out for Metropolitan Corporate Counsel’s Women in Business and the Law 2017 edition. In 2015, Massachusetts Lawyers Weekly named her one of the Top Women of Law and she received a 2015 Leadership Excellence Award from the National Diversity Council.
Clients in crisis engage Caroline for high-stakes internal investigations and complex litigation. Because the challenges companies face don't often fit neatly into one area of law, Caroline draws on her broad experience across cybersecurity, criminal law, and IP and commercial disputes to help clients see around corners and manage reputational and business risk, all while furthering their business and organizational objectives.
Caroline leads the Boston office and uses her extensive litigation and trial experience to help defend clients facing investigations and civil enforcement proceedings. In the realm of cybersecurity and data breach incident response, Caroline helps clients design and conduct large-scale internal investigations, and regularly advises clients and their Boards on security strategy, remediation, and risk mitigation. Caroline also has defended clients--including through trial and appeals--against allegations of fraud, securities violations, public corruption, and Foreign Corrupt Practices Act violations, resulting in favorable negotiated resolutions or decisions not to prosecute. She has conducted internal investigations involving suspected trade secret theft, fraud, financial misconduct, FCPA, and anticompetitive behavior, on behalf of both public institutions and companies of all stages.
Another focus of Caroline’s practice is intellectual property litigation, with a particular emphasis on disputes involving trade secret misappropriation and trademark and trade dress infringement claims. She has handled multiple trials before judges and juries, in state and federal court, and before the International Trade Commission (ITC). In this space, she has represented and defended companies across the tech, life sciences, pharmaceutical, materials, manufacturing and financial sectors.
Caroline currently co-chairs the IP Litigation Committee of the Boston Bar Association's Intellectual Property Law Section. In 2017, Caroline was named an Up & Coming Lawyer by Massachusetts Lawyers Weekly, and has been named a Rising Star by Super Lawyers in 2016 - 2020. She currently serves as co-chair of Orrick's DEI initiative and is an ambassador in the Move the Needle initiative, a trailblazing collaboration between Orrick, Diversity Lab, leading GCs, and four other law firms to advance diversity and inclusion in the legal profession through ambitious goals and bold experimentation. Caroline also maintains an active pro bono practice, currently representing 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 federal sentencing guidelines, reproductive rights, and political law.
Bob O’Connell devotes his practice to providing comprehensive trademark and copyright strategic advice, prosecution and enforcement for clients across many industries. He helps clients prevent and solve problems involving all aspects of domestic and international trademark law, as well as advertising and competition law and related disciplines.
His expertise includes registration and protection of copyrights; clearance and selection of pharmaceutical names; and negotiating and drafting a variety of licensing and technology transfer agreements and other IP-intensive transactions.
Businesses ranging from small start-ups to multi-billion dollar corporations turn to Mr. O’Connell for help developing and implementing cost-effective domestic and global branding and trademark protection plans. They hail from the financial services, food & beverage, alcohol, 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 agreement 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 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 2021 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. Previously, WTR 1000 reported that Mr. O’Connell “wins effusive praise for his “thoughtful and practical approach.” “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.
Noteworthy past and present client engagements include: