Heather J. McDonald

Partner

New York
T 212.589.4285  |  F 212.589.4201

Having been involved in anticounterfeiting and other intellectual property enforcement litigations since the start of her career, Heather McDonald has a depth and breadth of knowledge that few other lawyers possess. Her knowledge and experience is on ample display every time she works with clients to develop creative solutions to their problems. Heather is known for her innovation and historical knowledge in the industry, as there is hardly an aspect of anticounterfeiting litigation that Heather has not previously addressed or encountered. She delves into whatever work is required of her and does not hesitate to take action for her clients, whether it lie in first-hand participation in seizures of counterfeit goods or lobbying for legislation to help them fight the battles they face.

Heather is named in the World Trademark Review’s WTR 1000—The Definitive Guide to Trademark Legal Services, where she is referred to by one client as a lawyer whose “…name alone strikes fear in the hearts of counterfeiters.” She has received numerous awards from clients and law enforcement agencies for her service and commitment to protecting IP rights. Heather serves as the Deputy Litigation Coordinator for the firm's New York office.

Select Experience

  • Coordinates nationwide network of investigators, attorneys, and government agencies on both federal and state levels pursuing individuals and entities trafficking in counterfeit goods. This ground-breaking, multi-client project brings together competitors from across the industry to fight counterfeiters and has resulted in thousands of seizures of counterfeit goods by Heather and members of her team.
  • Principal architect of a program that holds third-party infringers liable for the illegal sale of counterfeit goods taking place on their premises if they have knowledge that illegal activity is ongoing and fail to take appropriate steps to remedy the situation. Developed this pioneering approach in the early 1990s and the program has since expanded from focusing on landlords who lease property to individuals or entities selling counterfeit goods to other businesses and industry sectors where individuals or entities provide counterfeiters with the tools that they need to conduct their illegal businesses.
  • Active involvement in drafting and lobbying for new legislation on the Federal and State level that substantially strengthened the penalties for those convicted of trafficking in counterfeit goods.
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Experience

  • Coordinates nationwide network of investigators, attorneys, and government agencies on both federal and state levels pursuing individuals and entities trafficking in counterfeit goods. This ground-breaking, multi-client project brings together competitors from across the industry to fight counterfeiters and has resulted in thousands of seizures of counterfeit goods by Heather and members of her team.
  • Principal architect of a program that holds third-party infringers liable for the illegal sale of counterfeit goods taking place on their premises if they have knowledge that illegal activity is ongoing and fail to take appropriate steps to remedy the situation. Developed this pioneering approach in the early 1990s and the program has since expanded from focusing on landlords who lease property to individuals or entities selling counterfeit goods to other businesses and industry sectors where individuals or entities provide counterfeiters with the tools that they need to conduct their illegal businesses.
  • Active involvement in drafting and lobbying for new legislation on the Federal and State level that substantially strengthened the penalties for those convicted of trafficking in counterfeit goods.
  • Involved in the global investigation of the largest financial fraud in history on behalf of the SIPA Trustee for the liquidation of Bernard L. Madoff Investment Securities LLC and leads several litigation teams seeking to recover assets for the Customer Fund.

Recognitions

  • WTR 1000—The World's Leading Trademark Professionals (2013 to present)
    • Top Attorney in New York for Enforcement
    • Top Attorney nationwide for Anticounterfeiting Efforts
  • Client Choice Award: Intellectual Property: Trademarks in New York (2014)
  • IP Stars—Top 250 Women in IP (2013)
  • New York “Super Lawyer” (2013, 2014)

Memberships

  • New York Bar Association
  • American Bar Association
  • International Trademark Association
    • Anticounterfeiting Committee
      • Chair, US Subcommittee
  • International Anticounterfeiting Coalition
    • Public Awareness Taskforce, Co-Chair

Community

  • Courageous Kidz (Charleston, South Carolina): President of the Board of Directors
    • Not-for-profit organization serving needs of children with cancer and their families.
    • Heather has been involved in providing support and services to families for more than 25 years.

Services

Industries

Admissions

  • U.S. District Court, District of Connecticut, 1986
  • U.S. District Court, Eastern District of New York, 1987
  • U.S. District Court, Southern District of New York, 1987
  • Connecticut, 1986
  • New York

Education

  • J.D., Pace University School of Law, 1986
  • B.A., Colby College, 1983