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Heather J. McDonald

She | Her | Hers

Of Counsel

New York
T +1.212.589.4285
F +1.212.589.4201
hmcdonald@bakerlaw.com
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"[O]ne of the most creative, experienced and passionate anti-counterfeiting lawyers in the field.”

— WTR 1000 - The World's Leading Trademark Professionals (2021)

Overview

Having been involved in anticounterfeiting and other intellectual property (IP) 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 are 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 clients, whether it lie in firsthand 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 World's Leading Trademark Professionals, 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 New York Litigation Leader and is a co-leader of the firm’s Litigation Associate Training Program.

Select Experience

  • Coordinates a nationwide network of investigators, attorneys and government agencies on both the federal and state levels pursuing individuals and entities trafficking in counterfeit goods. This groundbreaking, multiclient project brings together competitors from across the industry to fight counterfeiters and has resulted in thousands of seizures of counterfeit goods.
  • Is the 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 they need to conduct their illegal businesses.
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Experience

  • Coordinates a nationwide network of investigators, attorneys and government agencies on both the federal and state levels pursuing individuals and entities trafficking in counterfeit goods. This groundbreaking, multiclient project brings together competitors from across the industry to fight counterfeiters and has resulted in thousands of seizures of counterfeit goods.
  • Is the 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 they need to conduct their illegal businesses.
  • Was actively involved in drafting and lobbying for new legislation on the federal and state levels that substantially strengthened the penalties for those convicted of trafficking in counterfeit goods.
  • Is involved in the global investigation of the largest financial fraud in history on behalf of the Securities Investor Protection Act Trustee for the liquidation of Bernard L. Madoff Investment Securities LLC; leads several litigation teams seeking to recover assets for the Customer Fund.

Recognitions and Memberships

Recognitions

  • The Best Lawyers in America®
    • New York: Litigation - Intellectual Property (2022 to present)
  • Chambers USA: Intellectual Property: Trademark, Copyright and Trade Secrets in New York (2022)
    • Band 4 (2022)
  • National Bar Association "Top 40 Under 40 – Nation's Best Advocates" (2017)
  • WTR 1000—The World's Leading Trademark Professionals (2013 to 2019, 2021 to 2023)
    • Top Attorney in New York for Enforcement and Litigation - Silver
    • Top Attorney Nationwide for Anti-Counterfeiting
  • New York Law Journal “Woman of Influence” (2017)
  • Managing Intellectual Property: "IP Star" (2016)
  • Client Choice Award: Intellectual Property: Trademarks in New York (2014)
  • IP Stars—Top 250 Women in IP (2013)
  • New York “Super Lawyer” (2013 to 2022)
    • "Top 50 Women" (2015)
  • New York Metro "Super Lawyer Top Women Selected" for Intellectual Property Litigation (2020)

Memberships

  • New York Bar Association
  • American Bar Association
  • International Trademark Association (INTA)
    • Anticounterfeiting Committee
      • Chair (2016 and 2017)
      • US Subcommittee Chair (2014 and 2015)
  • International Anticounterfeiting Coalition
    • Public Awareness Taskforce: Co-Chair
  • New York Women Attorneys Committee: Co-Chair
  • BakerHostetler Women's Steering Committee
  • BakerHostetler Diversity Committee

News

News

Press Releases

Blog Posts

Community

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

Industries

Emerging Issues

Admissions

  • U.S. District Court, District of Connecticut
  • U.S. District Court, Southern District of New York
  • U.S. District Court, Eastern District of New York
  • U.S. Court of Appeals, Second Circuit
  • Connecticut, 1986
  • New York

Education

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

Blog

In The Blogs

Previous Next
IP Intelligence: Insight on Intellectual Property
The INFORM Act Passes; Combating Counterfeiting with Transparency in Online Sales
By Robertson D. Beckerlegge, Megan A. Corrigan, Heather J. McDonald, Sydney W. Park, Kevin M. Wallace
January 18, 2023
The recent passage of the Integrity, Notification, and Fairness in Online Retail Marketplaces for Consumers Act (INFORM Act) bears significant implications for brand owners and online marketplaces. For brand owners, the disclosure of...
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