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Karen K. Won

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[email protected]

+1.212.692.6704

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Karen Won is a nationally recognized trademark attorney and branding strategist with nearly two decades of experience advising clients across industries, most notably the life sciences and technology sectors. She advises clients — from Fortune 500 companies to biotech startups — on trademark counseling, brand protection, global trademark strategy, enforcement, licensing, and litigation.

Consistently named in the “World’s Leading Trademark Practitioners” by World Trademark Review (WTR) and “IP Stars” by Managing Intellectual Property, Karen is sought after by leading life sciences, technology, and consumer brands to guide their trademarks from concept to market.  Clients praise Karen for her “knowledgeable, practical, efficient” approach and trust her commercially-aligned partnership in providing “sound, pragmatic advice in an efficient manner.”  

WTR names Karen as one of the nation’s top trademark experts for the life sciences industry, with “unparalleled” pharmaceutical branding expertise and “impressive client list.” Navigating the complex overlay of trademark and health regulatory agency requirements, she “successfully obtains the most vital life sciences trademarks” through carefully coordinated multi-year, muti-country, multi-agency strategies tailored for each client.  Her expertise includes:

  • Clinical trial branding
  • Proprietary (brand) drug name selection and USPTO/FDA approval
  • Generic USAN/International Nonproprietary Name (INN) approvals
  • Drug name branding strategy 
  • Global trademark clearance, risk assessment, and regulatory analysis
  • Packaging, advertising, and launch clearance 
  • Pharmaceutical brand licensing and transactions 

In addition to her specialization in life sciences IP, Karen has comprehensive expertise for advising clients across diverse sectors, including technology, consumer products, and medical devices. Her practice includes:

  • Strategic trademark counseling
  • Global trademark clearance and prosecution
  • Copyright, trade dress, and domain strategy and enforcement
  • Brand protection and trademark enforcement 
  • Portfolio management and audit
  • Licensing, diligence and risk assessment, transaction support
  • Litigation, administrative proceedings, and dispute resolution  

Karen is an established speaker on topics such as pharmaceutical drug naming strategies, driving commercial value in life sciences through branding, and top IP pitfalls to avoid for startups.  

Before joining Mintz, Karen was at a California-based global law firm, where she co-managed the Trademark, Copyright, and Advertising practice in the Northeast U.S. region and founded the Pharmaceutical & MedTech Branding practice.

Karen Won is a nationally recognized trademark attorney and branding strategist with nearly two decades of experience advising clients across industries, most notably the life sciences and technology sectors. She advises clients — from Fortune 500 companies to biotech startups — on trademark counseling, brand protection, global trademark strategy, enforcement, licensing, and litigation.

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.
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viewpoints

Last week, the Food and Drug Administration (“FDA”) issued a pair of Guidance for Industry documents outlining best practices for developing proprietary names (i.e. brand names) for prescription and nonprescription human drug products. 
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Adding another layer of complexity to sensitively marketing in the COVID-19 environment, YouTube announced on March 11 that it will permit certain creators to monetize (i.e., enable ads on) content relating to coronavirus.  Companies and brands should review their approach in this pandemic, including refining YouTube content exclusion parameters and policing their ad environments, if they do not wish to risk association with potentially undesirable videos. 
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News & Press

Press Release Thumbnail Mintz

Mintz has been recognized in the 2025 edition of WTR 1000: The World’s Leading Trademark Professionals, marking the fifth consecutive year of acknowledgement by the World Trademark Review. This guide identifies the top trademark professionals and firms in over 80 jurisdictions worldwide. 

Press Release Thumbnail Mintz

Mintz is pleased to share that 15 attorneys have been recognized by Managing Intellectual Property in the 2024 edition of ‘IP Stars.’ The annual guide evaluates law firms and legal practitioners through in-depth research conducted by Managing IP, encompassing both contentious and non-contentious aspects of the intellectual property market across various states in the nation. The firm was recognized in the nationwide ITC Litigation and Life Sciences IP categories.

Press Release Thumbnail Mintz

NEW YORK, SAN DIEGO, and WASHINGTON, DC - Mintz has been recognized in the 2024 edition of WTR 1000: The World’s Leading Trademark Professionals, marking the fourth consecutive year of acknowledgement by the World Trademark Review. This guide identifies the top trademark professionals and firms in over 80 jurisdictions worldwide. This year, WTR ranked Mintz in New York as a leading firm for “Enforcement and Litigation” and “Prosecution and Strategy.”

Press Release Thumbnail Mintz

BOSTON, MA – In the 2023 edition of 'IP Stars,' published by Managing Intellectual Property (Managing IP), Mintz achieved recognition in two nationwide categories and received acknowledgment for the exceptional performance of nine of its attorneys.

Press Release Thumbnail Mintz

NEW YORK, SAN DIEGO, and WASHINGTON, D.C. – Mintz has been recognized in the 2023 edition of “WTR 1000: The World’s Leading Trademark Professionals”—a unique guide that identifies the top trademark professionals in key jurisdictions around the globe.

Press Release Thumbnail Mintz
The prestigious list recognizes influential women members of the New York City legal community and honors their professional, civic, and philanthropic achievements.
Press Release Thumbnail Mintz
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.
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podcasts

In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, IP Members Daniel Weinger and Karen Won discuss the recent Supreme Court decision in Jack Daniels v. VIP Products addressing whether the “Bad Spaniels” dog chew toy violates the Lanham Act for trademark infringement.

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In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, patent attorney Lily Zhang talks with trademark attorney Karen Won about the age-old choice between adopting descriptive brands or distinctive brands for businesses and products.
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Events & Speaking

Speaker
Mar
20
2024
Conference Reference Image
Moderator
Nov
10
2022
Webinar Reference Image
Panelist
Mar
5
2020

Women in IP

Cardozo IP Law Society

Benjamin N. Cardozo School of Law

Speaker
Mar
4
2020

Trademark Essentials for In-House Counsel

In-House Connect

Mintz, 666 Third Avenue, New York, NY 10017

Speaker
Oct
23
2019

Value of Fashion/Retail Brands

Fordham Law School

New York, NY

Speaker
Feb
13
2019
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
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

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Karen Won is a nationally recognized trademark attorney and branding strategist with nearly two decades of experience advising clients across industries, most notably the life sciences and technology sectors. She advises clients — from Fortune 500 companies to biotech startups — on trademark counseling, brand protection, global trademark strategy, enforcement, licensing, and litigation.

Recognition & Awards

  • World Trademark Review: WTR 1000 (2022-2025)

  • Managing Intellectual Property: IP Stars (Rising Star, 2019; Notable Practitioner, 2021-2025)

  • Leadership Council on Legal Diversity: Fellow (2022)

  • American Bar Foundation: Fellow (limited to 1% of licensed attorneys) (2021-present) 

  • Crain's New York Business: Notable Women in Law (2020)

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Karen Won is a nationally recognized trademark attorney and branding strategist with nearly two decades of experience advising clients across industries, most notably the life sciences and technology sectors. She advises clients — from Fortune 500 companies to biotech startups — on trademark counseling, brand protection, global trademark strategy, enforcement, licensing, and litigation.

Involvement

  • Member, International Trademark Association
  • Member, Pharmaceutical Trade Marks Group
  • Co-Chair, Trademarks/Copyright Subcommittee, National Asian Pacific American Bar Association
  • Member, Asian American Bar Association of NY
  • Fellow, Leading Women in Technology
  • Member, Chiefs In Intellectual Property (ChIPs)
  • Board of Directors (Former), Embers International Inc.
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