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 clients on pharmaceutical trademark and drug naming matters. She advises on pharmaceutical 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 names, including navigating the complex overlay of approval procedures and requirements at the USPTO and FDA; coordinated drug name and 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 advertising 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.
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.
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.
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.
viewpoints
EXCLUSIVE RIGHTS: Intellectual Property — Bad Dog? “Bad Spaniels” at SCOTUS
June 27, 2023 | Podcast | By Daniel Weinger, Karen K. Won
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.
EXCLUSIVE RIGHTS: Intellectual Property — Descriptive v. Distinctive: How to Brand Your Business and Products
June 17, 2021 | Podcast | By Karen K. Won
FDA Issues New Guidance on Drug Naming
December 17, 2020 | Blog | By Karen K. Won
YouTube Enables Ads on Coronavirus Content; Brands Should Evaluate Strategies to Mitigate Inadvertent Backlash
March 26, 2020 | Blog | By Karen K. Won
News & Press
Mintz’s Trademark Practice Recognized in 2024 WTR 1000 Rankings
February 06, 2024
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.”
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.
Mintz’s Trademark Practice Recognized in 2023 WTR 1000 Rankings
February 14, 2023
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.
Mintz, Practitioner Ranked in 2021 World Trademark Review 1000
February 23, 2021
Mintz Members Loretta Shaw-Lorello and Karen Won Selected to Crain’s New York 2020 Notable Women in Law List
December 16, 2019
Karen Won Joins Mintz Bolstering IP and Life Sciences Practices
September 18, 2019
Mintz Adds Ex-Cooley Life Sciences Trademark Pro In NY
September 18, 2019
Events & Speaking
Guide to Advertising for Life Sciences Companies: Insights from Legal and Business Perspectives
Association of Corporate Counsel San Francisco
Online Event
Trademark Essentials for In-House Counsel
In-House Connect
Mintz, 666 Third Avenue, New York, NY 10017
Key IP Protections and Pitfalls for Healthcare Entrepreneurs
Wharton Business School
Philadelphia, PA
Re-examining Current Dialogues on Diversity
National Asian Pacific American Bar Association Annual Convention
Washington Marriott Marquis, 901 Massachusetts Avenue, NW, Washington, DC 20001
Diamond in the Rough: Driving Commercial Value through Pharmaceutical Brands
Massachusetts Biotechnology Council
Cambridge, MA
Pharmaceutical Branding: Obtaining Trademark Protection and FDA Approval for Your Drug Name
Managing Intellectual Property, Life Sciences Forum
New York, NY
Successful Pharmaceutical Branding: Key Insights from the Business, Legal, and Creative Process
2016 BIO International Convention
San Francisco, CA
FDA's Proposed Guidance on Nonproprietary Naming of Biological Products
The Knowledge Group /The Knowledge Congress Live Webcast Series
Webinar
Commercial Value of Pharmaceutical Branding – Critical Knowledge for an Evolving Marketplace
PharmatekU Seminar Series
San Diego, CA
Building the Future Layer by Layer: Overview of 3D Printing and Potential Trademark/Copyright Issues
Association of Corporate Counsel
New York, NY
The Essentials for Pharma, Biotech, and Medtech Companies on How to Expand into the US Market
MedStartUp 2015
New York, NY
Pharmaceutical Branding: Navigating Processes and Pitfalls
New York Health Business Leaders
New York, NY
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.
Recognition & Awards
Ranked in World Trademark Review: WTR 1000 as Bronze tier in Prosecution and Strategy for New York (2024)
Selected as a member of the 2022 Fellows Program for the Leadership Council on Legal Diversity (LCLD) (2022)
World Trademark Review: WTR 1000 Leading Trademark Practitioners (2022)
Included in Crain's New York Business' list of "Notable Women in Law" (2020)
Managing Intellectual Property: Rising Star (2019) and recognized as a "Notable Practitioner" (2021 – 2024)
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.
Involvement
- Board of Directors (Former), Embers International Inc.
- Member, International Trademark Association
- Member, Pharmaceutical Trade Marks Group
- Member, Asian American Bar Association of NY
- Fellow, American Bar Foundation
- Leading Women in Technology, WILpower Program fellow
- Member, Chiefs In Intellectual Property (ChIPs)