Deborah A. Wilcox

She | Her | Hers

Partner

Cleveland
T +1.216.861.7864
F +1.216.696.0740

"[Deborah Wilcox is] responsive, knowledgeable and personable."

— Chambers USA 2021

Overview

An experienced trademark lawyer, copyright practitioner and first-chair litigator, Deborah Wilcox is a go-to intellectual property (IP) attorney. Deborah assists her clients in selecting, registering, monetizing and enforcing trademarks, domain names and copyrights. She is a strategic adviser 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. Deborah also has served as a mediator in a trademark dispute.

Highly regarded in her field, Deborah is listed in Chambers USA: America’s Leading Lawyers for Business in the area of Intellectual Property where she has been described as having "significant skill in acting for market-leading clients in complex trademark and copyright matters. She is also noted for her expertise in the social media sector." Market sources say: "She is great: reasonable, practical, hard-working and smart." (Chambers USA 2019). She has also been named an "IP Star" by Managing Intellectual Property magazine, as well as in "IP Stars – Top 250 Women in IP." Deborah has been named in World Trademark Review's WTR 1000 since 2014, where she has been described as a "smart, responsive professional who knows trademark law cold" (WTR 1000 2020). She is the Cleveland Intellectual Property Leader, as well as the leader of the firm's Trademark and Copyright team.

Select Experience

  • Won defense judgment on all counts as lead trial counsel in a trademark infringement, unfair competition and dilution case in the Eastern District of Pennsylvania.
  • Tracks fraudsters administering false coupons and discount cards on the internet on behalf of a restaurant industry client. Is working with the client to develop an action plan to cope with deception, including addressing victims of fraud and the public. Also advises the 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.
  • Assisted a national manufacturer/retailer in multiple cases of impersonation of the company's CEO. Sought out and removed fraudulent job advertisements created by an impersonator and directed fraud victims to appropriate law enforcement. Facilitated involvement with local and national law enforcement agencies for the inception of a criminal investigation.
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Experience

  • Won defense judgment on all counts as lead trial counsel in a trademark infringement, unfair competition and dilution case in the Eastern District of Pennsylvania.
  • Tracks fraudsters administering false coupons and discount cards on the internet on behalf of a restaurant industry client. Is working with the client to develop an action plan to cope with deception, including addressing victims of fraud and the public. Also advises the 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.
  • Assisted a national manufacturer/retailer in multiple cases of impersonation of the company's CEO. Sought out and removed fraudulent job advertisements created by an impersonator and directed fraud victims to appropriate law enforcement. Facilitated involvement with local and national law enforcement agencies for the inception of a criminal investigation.
  • With a developed understanding of the 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 a client being impersonated on Twitter and strategized to regain control of the 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 a client's social media presence.
  • Regularly counsels on trade dress clearance and handles trade dress enforcement through federal courts: obtained an injunction in the Southern District of New York for a shoe manufacturer under trade dress theory and successfully enforced rights against several imitators; obtained a jury trial verdict in the Eastern District of Virginia in a trade dress and copyright infringement case over a line of collectable figurines; and filed a lawsuit in the Northern District of Ohio to enforce trade dress in a line of plush toys.
  • Procures federal trade dress registration, including single colors for tools.
  • Regularly handles copyright infringement matters, such as takedown notices under the Digital Millennium Copyright Act, 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 a beverage company in launching its brand throughout the Caribbean. Assisted an international sports star with trademark protection for the launch of a retail business around the world. Assisted a Spanish-language television broadcaster with the relaunch of its brand in the 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 the ICANN Trademark Clearinghouse to protect rights with new, generic, top-level domains. Filed numerous Uniform Dispute Resolution Proceedings against cybersquatters and won or amicably resolved every case.
  • Established a worldwide trademark registration, enforcement and website launch for a famous children's plush toy line and virtual world. Regularly advises on new product clearance. 
  • Regularly handles federal copyright and trademark litigation for a major clothing retailer regarding fabrics, clothing and related merchandise, including in the Central District of California.
  • Files litigation in federal courts, including in the Northern District of Ohio, against counterfeiters of certification marks to protect consumers from products falsely marked as having been tested as safe.
  • Served as an expert witness regarding the reasonableness of attorneys' fees in three copyright lawsuits.

Recognitions and Memberships

Recognitions

  • Chambers USA: Intellectual Property in Ohio (2013 to 2021)
    • Band 1 (2021), Band 2 (2016 to 2020) and Band 3 (2013 to 2015) 
  • The Legal 500 United States (2019 to 2021)
    • Recommended in Intellectual Property - Copyright (2021)
    • Recommended in Intellectual Property - Trademarks: Non-contentious (including prosecution, portfolio management and licensing) (2019 to 2021)
  • The Best Lawyers in America® (2016 to Present)
    • Ohio: Trademark Law
      • Best Lawyers® "Lawyer of the Year" (2020)
  • WTR 1000 – The World's Leading Trademark Professionals (2014 to 2021)
    • Top Attorney in Ohio - Gold
  • Managing Intellectual Property magazine "IP Star" (2013 to 2021)
    • "IP Stars – Top 250 Women in IP"
  • Client Choice Award: Intellectual Property: Trademarks in Ohio (2013)
  • Martindale-Hubbell: AV Preeminent
  • Ohio "Super Lawyer" (2012, 2015 to 2018, 2020 to 2021)

Memberships

  • Kathleen M. O’Malley American Inn of Court: Secretary
  • United States District Court, Northern District of Ohio
    • Advisory Group (Emeritus)
  • Cleveland Intellectual Property Law Association
    • President (2012 to 2013); fourth female president in association’s nearly 100-year history
  • International Trademark Association
    • Bulletin Committee (2014 to 2017)
  • International AntiCounterfeiting Coalition (1995 to 2017)
    • Legislative Committee
    • Internet Task Force, Co-Chair Domain Name Working Group (2013 to 2017)
  • American Bar Association
  • Ohio State Bar Association
  • CompuMark Customer Advisory Panel
  • Cleveland Metropolitan Bar Association
    • IP Section Chair (2009 to 2010)
    • Golf Outing Chair (2010 to 2015)

News

News

Press Releases

Community

  • The Music Settlement: Board of Directors
    • First Vice Chair (2018 to 2019)
    • Second Vice Chair (2014 to 2017)
    • Chair of Governance Committee (2013 to 2016)
  • The Cleveland Association of Phi Beta Kappa: Board of Trustees
    • President (2015 to 2020)
    • Vice President (2010 to 2014)
  • The Ingenuity Festival of Art and Technology: Board of Directors
    • Emeritus Board Member (2017 to 2020)
    • Board President (2013 to 2016)
    • Board Member (2010 to 2013)

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
  • U.S. District Court, Southern District of Ohio, 1987
  • Ohio, 1987

Education

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

Blog

In The Blogs

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IP Intelligence: Insight on Intellectual Property
Tips for Benefitting from a US Trademark Examiner's Amendment
By Gabrial L. Mitchell, Deborah A. Wilcox
June 28, 2021
Trademark examiners in the U.S. often will reach out to applicants to handle certain amendments to their applications, avoiding the issuance of formal office actions. There are many benefits to working with the examiners, even though the...
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IP Intelligence: Insight on Intellectual Property
USPTO Implementing Trademark Modernization Act
By Kevin M. Wallace, Deborah A. Wilcox
May 27, 2021
Earlier this month, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rule-making[1] to implement provisions of the Trademark Modernization Act (TMA), which Congress passed in December 2020.[2] The public...
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IP Intelligence: Insight on Intellectual Property
Proposed Fast-Track Copyright Registration Option for Small Claims
By Lisa Bollinger Gehman, Deborah A. Wilcox
April 28, 2021
The U.S. Copyright Office has proposed a fast-track copyright registration option[1] for small claims to be brought before the Copyright Claims Board (CCB). Congress recently created the CCB under the Copyright Alternative in Small-Claims...
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IP Intelligence: Insight on Intellectual Property
Blacklist Complaints: A Novel Tool Against Bad-Faith Trademark Applicants in China
By Lesley M. Grossberg, Deborah A. Wilcox
March 18, 2021
Bad-faith trademark filings can pose a painful obstacle to brand owners’ attempts to register and enforce trademark rights in China. Traditionally, trademark owners have needed to file a broad range of defensive applications, oppose dozens...
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IP Intelligence: Insight on Intellectual Property
Copyright Claims Board To Be Established; Criminal Streaming Law
By Deborah A. Wilcox
December 23, 2020
Congress passed an act on Monday as part of the Consolidated Appropriations Act for 2021 that included the COVID-19 relief bill, expected to signed by President Trump, which will establish a voluntary dispute resolution process in the...
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