Deborah Gubernick

WTR Research

The WTR 1000 focuses exclusively on trademark practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal trademark expertise

Bronze - Individuals: prosecution and strategy

Deborah Gubernick's Profile

Deborah Gubernick has more than 20 years of experience helping a variety of clients protect and defend their brands in the United States and abroad. Ms Gubernick frequently assists clients in prosecuting, maintaining and defending their trademarks worldwide. She represents clients in cases involving trademark infringement, unfair competition, false advertising, counterfeiting, cybersquatting, breach of contract (particularly in the trademark licensing context) and more. She has handled more than 150 matters before the Trademark Trial and Appeal Board and routinely represents both plaintiffs and defendants in federal trademark infringement matters before the US district courts. She is also admitted before the US Court of Appeals for the Ninth Circuit.

Ms Gubernick has extensive experience with international and domestic trademark oppositions, cancellation actions, domain name disputes, cease and desist letters and various forms of online infringement. She routinely negotiates brand and trademark assignments, settlements, co-existence agreements and consent agreements. Her client base spans a wide variety of industries, including retail clothing, skincare, technology, sport/leisure, food services, whether high-end and well established or in the start-up phase. She provides IP due diligence for transactional matters and has done so on multi-million dollar and billion-dollar transactions. Clients routinely rely on her for strategic counselling and assistance for global trademark portfolios before, during and after litigation. Ms Gubernick is also committed to pro bono service in the trademark context and beyond. She represents multiple non-profit organisations in protecting their brands.

Ms Gubernick is a frequent author and speaker on trademark-related developments. She is an active member of the International Trademark Association, the Orange County Bar Association and the J Reuben Clark Law Society. Her recognitions include Southern California Super Lawyers, Rising Stars Edition - Top Women Attorneys of Southern California, Business Litigation (2014, 2016); Southern California Super Lawyers, Rising Stars Edition, Intellectual Property and Technology (2013-2015); and Women of Outstanding Leadership, The International Women's Leadership Association (2014).
 

Firm Profile

Snell & Wilmer is a full-service business law firm with more than 450 attorneys practising in 16 locations throughout the United States and in Mexico. The firm represents clients ranging from large, publicly traded corporations to small businesses, individuals and entrepreneurs.

Snell & Wilmer’s IP group, which consists of more than 40 lawyers, offers a comprehensive array of services, including trademark prosecution and litigation, patent prosecution and litigation, trade secret protection, copyright registration and protection, and licensing, distribution and other commercialisation agreements. Snell & Wilmer’s IP team advises clients on how to avoid IP liability and infringement.

Our trademark attorneys have extensive knowledge of our clients’ businesses and are equipped to assist in an efficient and sophisticated manner. Our clients appreciate the practical, business-focused approach to our trademark advice.

Our trademark clients are spread across the United States and around the world. Their needs are as diverse as their businesses, and their requirements are as broad as their geography. Our trademark team represents Fortune 100 companies, medium-sized companies and emerging companies in clearing, registering, enforcing and monetising their trademark and trade dress rights throughout the United States and the world.

Federal trademark clearance, registration, portfolio management and licensing

Our attorneys advise clients on trademark availability and selection, prepare trademark applications and prosecute applications before the USPTO through to registration. Thereafter, we assist clients in maintaining registered trademark rights. We manage approximately 11,000 registered and pending US and international trademarks for our clients in a broad array of industries, including food and beverages, apparel and footwear, pet care and pet food, automobiles, pharmaceuticals, biotechnology, audio equipment, medical devices and dental products and services, sporting goods, software, hotel and resort services, assisted living, renewable energy and water resources, cannabis/CBD, educational services, sports and entertainment services, lawncare and home improvement services, electronic devices and wireless products. Our attorneys also regularly assist clients in monetising their trademarks by way of brand extensions and licensing.

Trademark, trade dress and unfair competition litigation

Our trademark attorneys assist clients in policing and enforcing their trademarks, including preparing cease and desist letters and settlement agreements. Likewise, our attorneys assist clients in responding to cease and desist letters. If an amicable and satisfactory resolution is unachievable, we represent plaintiffs and defendants in actions for trademark and trade dress infringement, unfair competition, trademark dilution, counterfeiting, cybersquatting, false endorsement and false advertising in federal district and appellate courts throughout the country. We also represent clients before the TTAB in opposition and cancellation proceedings. Our trademark attorneys have represented clients in numerous UDRP cases against cybersquatters.

International trademark protection and disputes

Our attorneys have extensive, longstanding relationships with hundreds of foreign law firms. We work closely with those firms to assist clients in registering and maintaining their trademarks around the globe, including through the Madrid Protocol. Our attorneys also manage trademark opposition and cancellation proceedings in other countries, working alongside our trusted network of foreign associates and negotiating settlements of worldwide trademark disputes. They have supervised and assisted in recovering trademarks and domain names registered by cybersquatters in foreign countries. Our global and multinational clients expect and demand this breadth of experience and level of sophistication from their trademark counsel.

Snell & Wilmer’s trademark attorneys are annually recognised as leaders in their field in national legal rankings such as World Trademark ReviewThe Legal 500Super LawyersThe Best Lawyers in AmericaUS News Media GroupBest Lawyers and Managing Intellectual Property. Our lawyers participate in a variety of professional organisations, including various sections of INTA, the American Intellectual Property Law Association and the American Bar Association.

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