About

Marc Gorelnik is a skilled intellectual property and appellate attorney. For more than 19 years, he has worked closely with clients to create valuable brands and to protect them from poachers. Mr. Gorelnik serves client needs creatively and efficiently. He is viewed by clients as caring as much about their problems and successes as they do.

Intellectual Property Counseling and Transactions

    • Provides expert advice to clients in creating, capturing, protecting and enforcing trademarks, copyrights and patents
    • Specialist in rights clearance, providing full analysis of potential conflicts and options for domestic and international protection
    • Effective negotiator of business deals, not limited to IP matters
    • Drafting and review of assignments, licenses, and non-disclosure agreements
    • Negotiation and preparation of manufacturing services agreements, joint venture agreements, market trading area agreements, and other contractual documents

Trademark Prosecution

    • Experienced in all phases of trademark prosecution and portfolio management
    • Extensive practice in opposition and cancellation proceedings before the Trademark Trial and Appeal Board
    • Representative trademark prosecution clients: Sun-Maid Growers of California, Joseph Enterprises (CHIA PET, CLAPPER, and others), Lundberg Family Farms, and Au’some Candies.

Disputes and Enforcement

    • Work closely with clients to define defensible lines of enforcement
    • Effectively and economically address and resolve disputes over rights
    • Among the earliest experts in dispute resolution matters under the Uniform Domain Name Dispute Resolution Policy (UDRP)

District Court and ITC Litigation

    • Lead counsel on dozens of trademark, copyright, patent and unfair competition cases, second chair on many more
    • Represent furniture manufacturer in multiple design patent cases
    • Successful defense of utility patent infringement case in E.D. Texas, forcing dismissal prior to Markman hearing
    • Defense of action relating to integrated circuit before the International Trade Commission
    • Take and defend depositions of technical experts
    • Obtained seizure and temporary restraining orders and preliminary injunctions in trademark and copyright actions
    • Argued before the Ninth and Federal Circuit Courts of Appeal

Prior to entering the practice of law, Mr. Gorelnik was a project manager and member of the technical staff (physics) at Santa Barbara Research Center, a unit of Hughes Aircraft Company. He possesses an exceptional technical background and considerable experience in science and engineering.

2011- 2012     Counsel, Kilpatrick, Townsend and Stockton

1993-2012     Partner, Townsend and Townsend and Crew

1982 -1990     Project Manager and Member of Technical Staff, Physics, Santa Barbara Research Center, Hughes Aircraft Company

 

 

 

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