July 14, 2020

Volume X, Number 196

Karen K. Won

Karen is an intellectual property attorney with comprehensive experience across all aspects of branding, including trademark counseling, prosecution, disputes, and transactions. Drawing from her broad-spectrum experience, Karen provides business-friendly advice that guides clients to take smart risks. She works with many clients in the life sciences industry, particularly in pharmaceuticals, biotechnology, and medical devices. Her clients also range across the broader technology sector including e-commerce, mobile apps, and SaaS. She has advised clients ranging from Fortune 500 companies to early-stage start-ups.

Karen has specialized experience in counseling clients on pharmaceutical trademark and drug naming matters. She advises on pharmaceutical brand strategy across all stages of the development and commercialization lifecycle, including: clinical trial branding; non-proprietary drug naming; selection, clearance, and prosecution of proprietary drug names, including navigating the complex overlay of approval procedures and requirements at the USPTO and FDA; coordinated drug name and brand strategies across US and ex-US jurisdictions and across national trademark and regulatory agencies; structuring and managing drug brand portfolios; handling disputes with industry competitors; drug brand licensing; and drug/device advertising promotions and related patient/physician campaigns. 

Karen's areas of counseling include brand strategy, trademark clearance and use, copyright and trade dress protection, trademark and copyright enforcement, and trademark portfolio analysis.  Karen handles domestic and international trademark prosecution, often working with foreign counsel to implement a coordinated strategy across the global trademark portfolio.

In disputes, Karen strategizes and represents both sides of infringement and false advertising claims in cease & desist letters, TTAB proceedings, and federal litigation.  She initiates and resolves domain name disputes including via UDRP proceedings.  She has a strong record of dispute resolution via negotiating settlement and coexistence agreements.

Karen’s transactional experience includes negotiating and drafting trademark licenses and assignments, advising on the trademark/copyright issues related to commercial agreements, trademark portfolio audits, and due diligence analysis.

Karen has substantial speaking experience that ranges from educating multinational in-house legal/commercial teams on how to drive commercial value through brands, to advising entrepreneurs against top IP pitfalls for tech startups. Karen has also been active in pro bono matters and community service, particularly focusing on issues of social justice.

Prior to joining Mintz, Karen was a special counsel in the Trademark, Copyright & Advertising practice of a California-based global law firm, where she founded and led the Pharmaceutical & MedTech Branding practice. 

Articles in the National Law Review database by Karen K. Won