By Sheryl Koval Garko / Fish & Richardson
Sheryl Koval Garko is an intellectual property litigator in Fish & Richardson’s Boston office who enjoyed recent success in an influential trademark case decided by the U.S. International Trade Commission (ITC). Early in her career she benefitted from her firm’s support of women in its ranks. She still profits from that support, but she has also joined the leaders who have helped expand the ways women are supported. The interview has been edited for length and style.
MCC: Tell us about your intellectual property litigation practice and the kind of work you do for your clients. What attracted you to IP litigation specifically?
Garko: My practice focuses on trademark, copyright and trade secret litigation. I help clients that range from start-ups to Fortune 100 companies protect their brands, copyrighted works and trade secrets. I also work with them to avoid potential litigation or to successfully defend against litigation when it arises.
There are two primary things about IP litigation that drew me to this area. The first is that I love the challenge of learning about new technologies. Whether it’s a medical device protected by trade secrets, a new method for allowing the transmission of over-the-air television broadcasts on the internet or the manufacturing of sneakers, I enjoy digging in and learning the technical details. The second thing that attracted me to IP litigation is that this area of law is still evolving and constantly changing as new and emerging technologies are developed, which not only allows for but requires creative thinking.
MCC: You helped win a closely watched ITC trademark case last year for New Balance that has upended trademark law and continues to be litigated in the courts on appeal. What is the story behind that case, and where do things stand now?
Garko: Converse sued 31 respondents claiming infringement of its purported trade dress in its Chuck Taylor sneakers – specifically its combination of a toe cap, toe bumper and midsole stripes. New Balance intervened in that action to protect its well-known PF Flyers brand, which has been around since the 1950s. The trial took place in August 2015 and a final determination was issued on June 23, 2016, which found in favor of New Balance. The ITC found that the claimed trademark asserted by Converse against New Balance was invalid – meaning Converse did not have trademark rights to the claimed design elements.
We were able to show that consumers did not think that the combination of the toe cap, toe bumper and midsole stripes on the Chuck Taylor were themselves source-identifying – meaning that the vast majority of consumers would not look at only those elements and understand that meant the shoe was a Converse sneaker. While Converse has sold a lot of Chucks and advertised them heavily, it has not directed its efforts to the particular design elements at issue. Additionally, we were able to demonstrate that many companies over the years sold sneakers with the same combination of elements, so consumers would not be led to understand that those elements are associated with a single source. I think this is an important lesson for companies that want to claim specific elements of their overall product design as trade dress. Simply advertising the product as a whole is not enough. You need to call consumers’ attention specifically to what you claim as your trademark.
This was a major victory for our client and other shoe companies and retailers involved in the case that asserted that Converse was trying to monopolize common sneaker designs. IPLaw360 identified the matter as the top trademark ruling of 2016, noting that the win “marked a big setback for Converse’s aggressive campaign to protect its Chuck Taylor sneaker.” The case is currently being briefed on appeal in the U.S. Court of Appeals for the Federal Circuit.
MCC: What other high-stakes cases have you worked on?
Garko: Many of the cases I work on are high-stakes, regardless of the size of the company involved. A company’s brand and other intellectual property are often its most valuable assets. For example, I have represented small start-up companies that have been sued for alleged trade secret theft. That type of allegation at a funding stage can have a big impact. Being able to work with them to find resolutions that allowed them to move forward with their business was an important outcome for those clients.
Looking to my larger, more established clients, last fall I represented a major global retailer in a trial on damages resulting from a finding that our client had infringed on a smaller retail chain’s trademark for similar goods. The plaintiff was seeking damages in the high nine figures based on a theory of profit disgorgement. After a bench trial on the issue, the court awarded the plaintiff less than one-tenth of the amount it was seeking.
MCC: Your trial practice spans both the ITC and district court. What are the differences between litigating in these two very different venues? Do you prefer one over the other?
Garko: The ITC has a unique set of rules that you need to be intimately familiar with or you can easily run afoul of them. The ITC can only prevent goods from being imported into the country; it cannot award damages or cancel a trademark registration. If a company is seeking the latter type of relief, a district court is the preferred venue. On the other hand, ITC cases move very quickly, and you can have greater reach against foreign companies. At the end of the day, it depends on what your goals are in enforcement to determine which venue makes more sense.
MCC: You serve as Fish’s firmwide litigation marketing leader, appointed by the firm’s litigation practice group leader. What does this role entail, and how has your trial experience informed this and/or other leadership roles you’ve taken on at the firm?
Garko: I am responsible for coordinating and overseeing all aspects of the firm’s litigation marketing activities. This includes developing marketing strategy across offices, allocating resources, identifying marketing targets, and evaluating the success of the firm’s efforts. While I work primarily on the litigation side, I collaborate closely with my colleagues in the other practice groups (such as our patent prosecution group) to identify and work on cross-selling opportunities and joint marketing ventures. My trial and other substantive practice experience informs how I approach marketing strategy. Over the years, I have gained an understanding of what clients want and what they need at various stages of litigation, from pre-litigation counseling up through trial and appeal. Knowing this helps me determine where our resources are best spent and where our efforts should be focused to reach new clients and maintain the relationships we have with our current clients.
MCC: Fish has a women’s initiative called EMPOWER. How has this supported you in your career?
Garko: EMPOWER focuses on the issues women in our firm face, which are really the issues women face in the practice of law in general. EMPOWER has supported my career in many ways. It gave me a forum to connect with women across the firm so that I could develop a network of mentors. It provided me with a means through which I can actively work on addressing the day-to-day issues that women in our firm care about. Two issues I’ve been focusing on are helping women transition back from maternity leave and crafting strategies to support women’s advancement at our firm. The EMPOWER program also emphasizes business development training and professional development opportunities, which have played important roles in my growth at the firm.
MCC: Who has most influenced you in your career?
Garko: My husband Michael, who is an in-house lawyer now but started out in private practice. He has supported me every step of the way in my career. He has encouraged me to take risks when I otherwise might not have. We are truly a team when it comes to raising our daughter. He is home for her when I can’t be because of travel or trial or whatever other work demands arise. Without his dedication to our family, I wouldn’t be able to do what I do on a daily basis.
MCC: What advice do you have for women entering your profession?
Garko: This is your career. No one – even if they have the best intentions – will ever care about it as much as you do. You need to be thoughtful about where you want your career to go and put the pieces in place to make that happen. People often talk about seizing opportunities, but I think it is more important to be willing to create them. Don’t wait for someone to come and offer you a particular role on a case – go and ask for it. I had a partner I worked with tell me (long after the fact) that what gave me the edge to get a coveted role on a particular case was that, while lots of folks reached out to him about the matter, I was the only one who went to his office in person to tell him I wanted to work on this particular matter. Showing that extra level of interest is important.
MCC: What do you love most about what you do?
Garko: What I love about this job is that every day is different. No two cases are the same, no two clients are the same. That keeps things interesting and challenging. The ever-changing nature of what I do allows for the creation of new opportunities, whether it be expanding my expertise in a substantive area of the law or finding a new way to connect with potential or existing clients. I also love the people I get to work with. Both my clients and my colleagues are some of the smartest people in their industries, and I am constantly learning from them.
Sheryl Koval Garko is a principal at Fish & Richardson, where she focuses her practice on intellectual property litigation. She has particular expertise in trademark, copyright, trade secret and media litigation. She is based in Fish’s Boston office and can be reached at garko@fr.com.