Heather McDonald focuses her practice on intellectual property enforcement and anti-counterfeiting litigation. She serves as Baker Hostetler’s Deputy Litigation Coordinator for the New York Office, with practice management responsibility for approximately 100 attorneys in the firm’s New York office.
Ms. McDonald 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. In a profile article about her, Women’s Wear Daily described the program as, “a ‘benchmark’ project, [bringing] together different brands, which collectively hire McDonald to seize any fakes she identifies while on raids.”
Ms. McDonald has been actively involved in drafting and lobbying for new legislation in the State of New York that would substantially strengthen the penalties for those convicted of trafficking in counterfeit goods. She has also worked on similar legislation in many other states and on the federal level. Ms. McDonald trains law enforcement officers throughout the country on both the federal and state levels on issues related to trademark counterfeiting. For her service and commitment to protecting IP rights, Ms. McDonald has received numerous awards from both clients and law enforcement.
Ms. McDonald has been a pioneer in the area of third party liability in trademark counterfeiting cases. Using both federal and state laws, Ms. McDonald is the principal architect of a program that holds property owners liable for the illegal subject of counterfeit goods that take place on their premises if they have knowledge that the illegal activity is ongoing and fail to takes appropriate steps to remedy the situation. She is also actively involved in several task forces, including the New York City Taskforce, of which she is a founding member, which serves to unite the public and private sectors in New York City dealing with issues related to counterfeit goods.
Ms. McDonald was recently honored when named to the World Trademark Review’s WTR 1000—The Definitive Guide to Trademark Legal Services. She is listed as one of the top attorneys in New York for enforcement and one of the top attorneys nationwide for anticounterfeiting efforts, of which there are few. In the Guide, she is referred to by a client as one whose “…name alone strikes fear in the hearts of counterfeiters.” The WTR 1000 is the first and only standalone ranking publication to focus exclusively on trademark practices and practitioners.
In addition to her work in anti-counterfeiting litigation, Ms. McDonald is a seasoned general litigator. On behalf of the SIPA Trustee for the liquidation of Bernard L. Madoff Investment Securities LLC, she is currently involved in the global investigation of the largest financial fraud in history and leads several litigation teams seeking to recover assets for the Customer Fund.
Ms. McDonald is a member of the New York and Connecticut Bars. She is a member of the Anticounterfeiting Committee of International Trademark Association and chairs their task group on Public Awareness for North America. Additionally, she is a member of the International Anticounterfeiting Coalition and co-chair of their China Taskforce.
Ms. McDonald is actively involved in Courageous Kidz, a not-for-profit organization located in Charleston, South Carolina, that serves the needs of children with cancer and their families. Ms. McDonald currently serves as President of the Board of Directors and has been actively involved in providing support and services to these families for more than 25 years.