Deborah A. Wilcox

Partner

Cleveland
T 216.861.7864  |  F 216.696.0740

"[Deb is] good at spotting issues that may arise down the road, always responsive, always available and knows our company, our organization and our products."

— Chambers USA 2014

An experienced trademark lawyer, copyright practitioner and first-chair litigator, Deborah Wilcox is a go-to intellectual property attorney. Deborah assists her clients in selecting, registering, monetizing, and enforcing trademarks, domain names, and copyrights. She is a strategic advisor to clients, structuring IP deals and adapting her legal advice to evolving technologies such as mobile apps and social media sites. She works with clients to understand their risk tolerance and develop practical strategies and best practices suited to their goals. Often, this involves filing civil lawsuits or pursuing criminal prosecution, especially when enforcing her clients’ zero-tolerance policies against counterfeiters. Deborah applies her depth of knowledge to assist clients around the globe with their international intellectual property needs.

Highly regarded in her field, Deborah is listed in Chambers USA: America’s Leading Lawyers for Business in the area of Intellectual Property and has been named a 2013 “IP Star” by Managing Intellectual Property magazine, as well as in “IP Stars—Top 250 Women in IP.” She is the Coordinator for the Intellectual Property, Technology and Media team in the firm’s Cleveland office.

Select Experience

  • Tracks fraudsters administering false coupons and discount cards on the Internet on behalf of a restaurant industry client. Works with client to develop action plan to cope with deception, including addressing victims of fraud and the public. Also advises corporation on advertising concerns and trademark clearance, prosecution and enforcement through cease and desist letters, litigation and trademark oppositions before the Trademark Trial and Appeal Board (TTAB).
  • Assisted national manufacturer/retailer in multiple cases of impersonation of company CEO. Sought out and removed fraudulent job advertisements created by impersonator and directed fraud victims to appropriate law enforcement. Facilitated involvement with local and national law enforcement agencies for inception of criminal investigation.
  • With a developed understanding of policies of social media sites, sends cease and desist notices and negotiates with sites to protect clients against unauthorized usage of IP rights on the Internet. Represented client being impersonated on Twitter and strategized to regain control of persona. Confronted dozens of names being pirated on Facebook for a major international home appliance manufacturer. Sent notices to Instagram to reestablish appropriate control of client’s social media presence.
  • Regularly counsels on trade dress clearance and handles trade dress enforcement through federal courts. Obtained injunction in S.D.N.Y. for shoe manufacturer under trade dress theory and successfully enforced rights against several imitators; obtained jury trial verdict in the Eastern District of Virginia in trade dress and copyright infringement case over a line of collectable figurines; filed lawsuit in the Northern District of Ohio to enforce trade dress in line of plush toys.
  • Procures federal trade dress registration, including single color for tools.
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Experience

  • Tracks fraudsters administering false coupons and discount cards on the Internet on behalf of a restaurant industry client. Works with client to develop action plan to cope with deception, including addressing victims of fraud and the public. Also advises corporation on advertising concerns and trademark clearance, prosecution and enforcement through cease and desist letters, litigation and trademark oppositions before the Trademark Trial and Appeal Board (TTAB).
  • Assisted national manufacturer/retailer in multiple cases of impersonation of company CEO. Sought out and removed fraudulent job advertisements created by impersonator and directed fraud victims to appropriate law enforcement. Facilitated involvement with local and national law enforcement agencies for inception of criminal investigation.
  • With a developed understanding of policies of social media sites, sends cease and desist notices and negotiates with sites to protect clients against unauthorized usage of IP rights on the Internet. Represented client being impersonated on Twitter and strategized to regain control of persona. Confronted dozens of names being pirated on Facebook for a major international home appliance manufacturer. Sent notices to Instagram to reestablish appropriate control of client's social media presence.
  • Regularly counsels on trade dress clearance and handles trade dress enforcement through federal courts. Obtained injunction in S.D.N.Y. for shoe manufacturer under trade dress theory and successfully enforced rights against several imitators; obtained jury trial verdict in the Eastern District of Virginia in trade dress and copyright infringement case over a line of collectable figurines; filed lawsuit in the Northern District of Ohio to enforce trade dress in line of plush toys.
  • Procures federal trade dress registration, including single color for tools.
  • Regularly handles copyright infringement matters, such as take-down notices under Digital Millennium Copyright Act (DMCA), to protect clients against piracy of their written materials, photographs and audio-visual works.
  • Provides advice to clients on new brand names, licensing, and e-commerce terms of use and privacy policies, for businesses operating domestically and internationally. Assisted beverage company in launching brand throughout the Caribbean. Assisted international sports star with trademark protection for launch of retail business around the world. Assisted Spanish-language television broadcaster with relaunch of brand in U.S., South America and Europe.
  • Works extensively on domain name issues and counsels clients in Internet Corporation for Assigned Names and Numbers (ICANN) disputes and recording trademarks with ICANN Trademark Clearinghouse to protect rights with new generic top level domains (gTLDs). Filed numerous Uniform Dispute Resolution Proceedings (UDRPs) against cybersquatters and won or amicably resolved every case.
  • Established worldwide trademark registration, enforcement and website launch for famous children’s plush toy line and virtual world. Regularly advises on new product clearance. 
  • Regularly handles federal copyright and trademark litigation for major clothing retailer regarding fabrics, clothing and related merchandise, including in the C.D. Cal.
  • Files litigation in federal courts including the N.D. Ohio against counterfeiters of certification marks to protect consumers from products falsely marked as having been tested as safe.
  • Served as expert witness regarding reasonableness of attorneys’ fees in three copyright lawsuits.

Recognitions

  • Wilcox, Deborah AChambers USA: Intellectual Property in Ohio (2013, 2014)
  • WTR 1000—The World's Leading Trademark Professionals (2014)
  • Managing Intellectual Property magazine "IP Star" (2013 and 2014)
    • "IP Stars—Top 250 Women in IP"
  • Client Choice Award: Intellectual Property: Trademarks in Ohio (2013)
  • Martindale-Hubbell: AV Preeminent
  • Ohio "Super Lawyer" (2012)

Memberships

  • United States District Court, Northern District of Ohio
    • Advisory Group
    • Federal Rules Discovery Disputes Subcommittee Chair
  • Cleveland Intellectual Property Law Association
    • President (2012 to 2013); fourth female president in association’s nearly 100-year history
  • International Trademark Association
    • Bulletin Committee
  • International AntiCounterfeiting Coalition
    • Legislative Committee
    • Internet Task Force, Co-Chair Domain Name Working Group (2013 to 2014)
  • American Bar Association
  • Ohio State Bar Association
  • Cleveland Metropolitan Bar Association
    • IP Section Chair
    • Golf Outing Chair (2010 to 2014)

Community

  • The Music Settlement: Board of Directors, Chair of Governance Committee (2013 to 2014)
  • The Cleveland Association of Phi Beta Kappa: Vice-President (2010 to 2014)
  • The Ingenuity Festival of Art and Technology: President (2014)

Services

Prior Positions

  • Case Western Reserve University Law School: Adjunct Professor of Trademarks
  • University of Florida Fredric G. Levin College of Law: Advisory Board

Admissions

  • U.S. Court of Appeals, Sixth Circuit, 2006
  • U.S. Court of Appeals, Fourth Circuit, 1991
  • Ohio, 1987

Education

  • J.D., University of Wisconsin-Madison, 1987, with honors
  • B.A., University of Wisconsin-Madison, 1984, with distinction, Phi Beta Kappa