Attorneys

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DEBORAH A. GUBERNICK

SHAREHOLDER

Telephone   949.717.3000

FACSIMILE   949.717.3100

610 NEWPORT CENTER DRIVE, SUITE 700
NEWPORT BEACH, CALIFORNIA 92660

Deborah Gubernick
Deborah Gubernick

DEBORAH A. GUBERNICK

SHAREHOLDER

Deborah A. Gubernick joined the firm after working for multiple years at Latham & Watkins as a litigation associate. She represents clients in various business litigation matters in federal and state courts. Ms. Gubernick has significant experience with intellectual property cases involving claims of false advertising, unfair competition, infringement, breach of contract and related issues. She also handles employment litigation matters and strategic counseling. Among other areas, Ms. Gubernick has counseled international and domestic businesses in advertising and marketing issues and has negotiated assignments, settlements, trademark co-existence agreements and licenses. Ms. Gubernick also manages clients’ international trademark portfolios, including clearances of trademarks, representing clients in international and domestic infringement and counterfeiting operations and the prosecution of trademarks before the USPTO and Trademark Trial and Appeal Board.

EDUCATION

Ms. Gubernick obtained her Juris Doctorate degree from the University of San Diego where she served as Research Editor on the San Diego Law Review. She obtained her Bachelor of Arts Degree in English at Brigham Young University.

REPRESENTATIVE MATTERS
  • Represented Plaintiff in case involving trade secret violations by former employees, resulting in multi-million dollar settlement paid to client
  • Defended well-known apparel and accessories brand licensee in breach of contract dispute involving its worldwide licensor, resulting in dismissal of all claims and favorable settlement prior to trial
  • Represented nationally recognized gas service station company in dispute with franchisee, resulting in complete dismissal of claims against company and monetary settlement paid to company
  • Defended specialty grocery store chain in infringement action, resulting in dismissal of all claims with zero dollars owed by defendant
  • Represented company in litigation involving ownership rights to its key trademark, resulting in a permanent injunction against unauthorized use of trademark by former co-owner
  • Defended company in employment litigation matter brought by contract employee, resulting in complete dismissal of claims and settlement at early stages of litigation
  • Represented Plaintiff, a family owned addiction recovery, behavioral health, and therapeutic transitional living business in a trademark dispute involving its key trademark and brand. After Defendant refused to cease and desist use of the infringing mark, Plaintiff sued. The parties settled shortly before trail requiring Defendant to rebrand, cease all use of the infringing mark, and pay $400,000 to Plaintiff
  • Litigated breach of contract case related to highly technical software license on behalf of Plaintiff in matter before the American Arbitration Association, resulting in high six figure award to Plaintiff
  • Represented Plaintiff in highly contested and emotional trademark infringement, copyright infringement and trade secrets misappropriation case. Obtained favorable settlement whereby Plaintiff’s former licensee agreed to permanently cease using Plaintiff’s confidential and proprietary information, valuable intellectual property and agreed to a monetary payment
  • Defended apparel and sunglass company in a matter before the Trademark Trial and Appeal Board (TTAB) brought by a major sports organization. Negotiated favorable coexistence resulting in dismissal of the case
  • Defended sporting goods and sport-apparel company in a matter before the TTAB brought by a famous brand clothing brand. Negotiated favorable coexistence resulting in dismissal of the case
  • Defended apparel applicant/counter-claimant in a trademark opposition proceeding before TTAB resulting in withdrawal of the opposition—allowing applicant/counter-claimant’s primary mark and brand name to register
  • Represented multiple nationally recognized brand-owners in over 60 matters before the Trademark Trial and Appeal Board
PRESENTATIONS
  • INTA –January, 2015, “Decisions You Need to Know: Key Trademark Cases from 2014”
  • J. Reuben Clark Law Society – WIL Conference, September, 2015 “Gender Bias: What Can Be Done to Overcome It?”
  • FBI (Fashion Business Incorporated) Webinar – Summer, 2011 “Apparel Legal Basics”
  • UCLA IP Fiat Lux Seminar – Fall 2009 and 2010 – Guest Lecturer
  • Volcom MBA – Presenter on Intellectual Property at Volcom’s Annual MBA Academy
  • CLE Presentations – “Post Trial Motions” and “Trademarks 101”
PUBLICATIONS
  • California Fashion Association – Summer, 2012 “New Business Issues for Retailers”
  • “When Consumers Get Confused,” Trademark World, April 1, 2010
  • “The United States Patent and Trademark Office Amends Rules Governing Inter Partes Proceedings Before the Trademark Trial and Appeal Board,” Latham & Watkins Client Alert, February 6, 2008
AWARDS/RECOGNITIONS
  • 2013, 2014, 2015 – Recognized as one of “Southern California’s Rising Stars” by Super Lawyers Magazine
  • 2014 – The International Women’s Leadership Association – Woman of Outstanding Leadership
  • 2013 – Recognized as one of the “Top Women Attorneys of Southern California” in Los Angeles Magazine
  • 2013 – OC Lawyer – Included in “Who’s Who in the OCBA – The Affiliate Bars”