Mark is a Principal and trial lawyer in the Boston office of Fish & Richardson, where he specializes in trademark, copyright and media litigation. He has spent his career helping safeguard some of the most recognizable brands in the world as well as assisting start-up and established technology companies develop comprehensive strategies to avoid litigation where possible, and to succeed in litigation when necessary.
Most recently, Mark was lead defense counsel for New Balance in a fast-moving six-month International Trade Commission (ITC) investigation concerning claims of trade dress infringement related to the design of athletic footwear. The ITC ruled in favor of his client, finding that the plaintiff had no rights in the claimed design. IP Law360 selected the matter as the most significant trademark case of 2016.
Mark stands out from most attorneys because of his deep experience conducting accelerated cases. For example, he was lead plaintiff counsel for Explorica in a trademark case he tried to a successful 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. He is also skilled at understanding new and complex concepts and technology, and presenting them to a judge or a jury in a way that is persuasive and easy to grasp. For example, he led the trial and appellate team’s successful presentation of the key technology on behalf of defendant Aereo in ABC v. Aereo, a widely publicized copyright case recently argued before the United States Supreme Court. The presentation of that technology was the basis of the trial court’s denial of a preliminary injunction, and the Second Circuit’s affirmance of that decision.
He has successfully represented numerous high-profile clients in significant trademark and copyright matters, including Microsoft, Samsung, Massachusetts Institute of Technology, and Monotype Imaging.
Mark’s exceptional record of success has earned him praise as a problem solver from client and peer surveys. World Trademark Review 1000 has called him “intelligent, thoughtful and client-oriented” and “incredibly impressive.” Legal 500 has described him as a “smart, creative” trial lawyer who “anticipates everything.” And in 2016, IP Law360 selected two of his cases among the top ten trademark decisions of the year.
U.S. District Court for the Western District of Michigan
U.S. District Court for the Northern District of New York
Memberships & Affiliations
Member of the International Trademark Association; Media Law Resource Center; Massachusetts Bar Association; Boston Bar Association; and American Bar Association.
The World Trademark Review WTR 1000, a peer and client surveyed listing, has identified Mark as a leading practitioner for trademark litigation seven years in a row (2011-2017). In 2011, WTR 1000 characterized his work as “incredibly impressive” and further praised Mark as “highly recommended” for court room work. Clients turn to him because he is “intelligent, thoughtful and client-oriented” and one who can “expertly parse through substantial volumes of information to quickly identify the crux of the matter.” Both Mark and litigator David Hosp were identified as a “force to be reckoned with” and Mark wins “plaudits for his narrative skills before a jury, thanks to his instincts for the best way to present a case.” Most recently, the 2017 edition praised him as “efficient and effective” and “clearly a subject matter expert at the top of his field.”
The Legal 500, another peer and client surveyed listing, has also repeatedly identified Mark as a leading trademark litigator. He is identified as a “notable practitioner” who is “smart, creative, and anticipate[s] everything.” He “has a quick grasp on trademark law and procedure” and “can be the ‘brains’ behind a team effort.” Most recently, in 2016, he was praised for his “extensive experience” in trademark litigation.
Mark is also recognized as an “IP Star” by Managing Intellectual Property magazine (2014, 2015, 2016, 2017), and a Massachusetts and New England Super Lawyer “Rising Star” by Law & Politics and Boston Magazine (2006-2008; 2011).
“Empirical issues in Trademark Law,” McCarthy, Microsoft, and INTA Symposium, Trademark Law and Its Challenges (February 17, 2017).
“Intellectual Property IQ: A Workshop For Artists, Developers, And Entrepreneurs,” SXSW Interactive (March 11, 2014).
Mr. Puzella has advised clients in all phases of litigation, from the preliminary injunction stage through trial and appeal. Recent work includes representing:
– One of the world’s largest retailers in the prosecution and defense of trademark and unfair competition claims in various federal courts.
– New Balance in a purported class action concerning “Made in the USA” marketing.
– New Balance in an ITC investigation concerning trade dress infringement claims related to certain Converse footwear.
– Samsung in a trademark infringement litigation related to its use of MILK in connection with a streaming music application.
– Microsoft in a copyright litigation brought by Getty Images concerning the Bing Image Widget.
– Aereo, a provider of remote antenna and RS-DVR technology platform, in multi-district copyright litigation brought by the major television networks alleging violation of their “public performance” rights.
– Monotype Imaging, Linotype, International Typeface Corporation, and Bitstream in connection with trademark and copyright issues, including royalty disputes with licensees of their font software.
– Houghton Mifflin Harcourt and The Learning Company in successfully obtaining preliminary court orders prohibiting Zynga from using the iconic mark OREGON TRAIL in connection with the planned launch of a computer game.
– The New York Times and the Boston Globe in copyright and trademark litigation concerning the use of third-party ledes and hyperlinks.
– Explorica, Inc., a market leader in educational travel, in several matters, including as lead counsel in a trademark infringement trial against a competitor that rebranded as EXPLORITAS. After a five day trial the jury returned a verdict in favor of Explorica and the court issued a permanent injunction.