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Karen K. Won

Member

[email protected]

+1.212.692.6704

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Karen is an intellectual property attorney with comprehensive experience across all aspects of a trademark practice – counseling, disputes, prosecution, and transactions. She also handles matters relating to copyright and false advertising. She works with many clients in the life sciences sectors, 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 particular experience in counseling life sciences clients on branding matters. She has advised many companies with the selection, clearance, strategy, and commercialization of drug brands, including advising on the complex overlay of drug name requirements at the USPTO and FDA to obtain requisite approvals. She also advises on non-proprietary names, clinical trial branding, drug brand licensing, drug/device promotions, and related campaigns. 

For all clients, Karen handles domestic and international trademark prosecution. She also advises on trademark clearance and use, brand strategy, copyright and trade dress protection, trademark policing and enforcement, and portfolio structuring, maintenance and management. 

In disputes, Karen strategizes and represents both sides of infringement and false advertising claims in cease & desist letters, TTAB proceedings, and federal litigation. 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, and conducting due diligence analysis.

Prior to joining Mintz, Karen was a special counsel and associate in the Trademark, Copyright & Advertising practice of a California-based global law firm.  Earlier, she was a litigation associate and a summer associate with a New York-based international law firm.

While in law school, Karen served as a senior editor of the Harvard International Law Journal and as a legal intern with the International Justice Division of Human Rights Watch in Belgium.

Education

  • Harvard Law School (JD)
  • Stanford University (BA)

Experience

  • Counseling:  Developing a comprehensive pre-commercialization branding strategy for a biopharmaceutical client with an innovative drug delivery system. Karen’s work for this client included trademark and regulatory risk assessment for drug names, global prosecution activities, resolving disputes with leading pharmaceutical companies, assisting with FDA proprietary name review issues, and counseling on product packaging and launch materials.
  • Enforcement:  Protecting a client in the toy industry from infringing competitors through a coordinated policing and enforcement strategy across trademarks, copyrights and trade dress.
  • Transaction:  Negotiated and prepared purchase and license terms for trademark, copyright, and right of publicity assets related to Elvis Presley on behalf of an entertainment licensing client involved in the operation of Graceland.
  • Litigation:  Served as a subject matter specialist on a litigation team that secured a summary judgment victory for the defendant in the Oculu LLC v. Oculus VR Inc. trademark infringement case in the Central District of California.

Involvement

  • Board of Directors (Former), Embers International Inc.
  • Member, International Trademark Association
  • Member, Pharmaceutical Trade Marks Group
  • Member, National Asian Pacific Bar Association
  • Member, Asian American Bar Association of NY
  • Member, Korean American Lawyers Association of Greater NY