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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 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 life sciences clients on branding matters. She advises on 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 brands, including navigating the complex overlay of approval procedures and requirements at the USPTO and FDA; coordinated 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 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.  Earlier, she was a litigation 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

Languages

- Korean

Recent Insights

News & Press

News & Press

Mintz is pleased to announce that Karen Won, an intellectual property attorney with comprehensive experience across all aspects of a trademark practice – counseling, disputes, prosecution, and transactions – has joined the firm as a Member.
Law360 highlighted the arrival of trademark attorney Karen Won as a Member in Mintz’s Intellectual Property and Life Sciences Practices based in New York. In the article, Ms. Won remarked on her background as an attorney, the focus of her practice, and her move to Mintz. "What really drew me to Mintz was the strength of their life sciences platform, which is amazingly broad and deep, including a very strong regulatory practice here," she said.

Events

Speaker
Oct
23
2019

Value of Fashion/Retail Brands

Fordham Law School

New York, NY

Speaker
Feb
13
2019

Key IP Protections and Pitfalls for Healthcare Entrepreneurs

Wharton Business School

Philadelphia, PA

Panelist
Nov
3
2017

Re-examining Current Dialogues on Diversity

National Asian Pacific American Bar Association Annual Convention

Washington Marriott Marquis, 901 Massachusetts Avenue, NW, Washington, DC 20001

Speaker
Mar
1
2017
Speaker
Sep
14
2016

Pharmaceutical Branding: Obtaining Trademark Protection and FDA Approval for Your Drug Name

Managing Intellectual Property, Life Sciences Forum

New York, NY

Speaker
Jun
8
2016
Speaker
May
20
2016

FDA's Proposed Guidance on Nonproprietary Naming of Biological Products

The Knowledge Group /The Knowledge Congress Live Webcast Series

Webinar

Speaker
Sep
16
2015

Pharmaceutical Branding: Navigating Processes and Pitfalls

New York Health Business Leaders

New York, NY

Speaker
Oct
23
2014

Building a Strong Foundation for Growing Your Brand

Association of Corporate Counsel

New York, NY