Bruce A. McDonald is a Partner in the Intellectual Property Practice of Smith, Gambrell & Russell, LLP.
Mr. McDonald’s practice focuses on trademark and copyright law, including trademark registration and clearance opinions, investigations and enforcement litigation, with particularized expertise in the identification of parties in interest and pursuit of claims arising from the advertising and sale of goods and services at fictitious and anonymous websites. He defended the American Bar Association in the only suit for trademark infringement ever brought against the ABA. He also represents innovative drug developers in the negotiation of licensing agreements, and represents a pharmaceutical association in connection with the protection of intellectual property in pharmaceutical products and medical devices.
Background. Prior to specializing in intellectual property, Mr. McDonald served as a federal appellate litigation attorney in the Office of the Solicitor at the U.S. Department of Labor, where he represented the Secretary of Labor in numerous cases before the U.S. Courts of Appeals, e.g., Back v. Director, Office of Workers’ Compensation Programs, 796 F.2d 169 (6th Cir. 1986); Begley v. Consolidation Coal Co., 826 F.2d 1512 (6th Cir. 1987); Farmer v. U.S. Dept. of Labor, 839 F.2d 269 (6th Cir. 1988); Heffinger v. U.S. Dept. of Labor, 813 F.2d 401 (4th Cir. 1986); Kiser v. Office of Workers’ Compensation Programs, 85-19944, 1986 U.S. App. LEXIS 186368 (4th Cir. June 12, 1986); Phillips v. Director, Office of Workers’ Compensation Programs, 768 F.2d 982 (8th Cir. 1985); and Williamson Shaft Contracting Co. v. Phillips, 794 F.2d 865 (3d Cir. 1986). Prior to that he specialized in natural resources and energy regulatory litigation, appearing as counsel of record in Oasis Petroleum Corp. v. U.S. Dep’t of Energy, 718 F.2d 1558 (Temp. Em. Ct. App. 1983); Kocher Coal Co. v. Marshall, 497 F. Supp. 73 (E.D.Pa. 1980), and Kocher Coal Co. v. Marshall, 505 F. Supp. 156 (E.D. Pa. 1981).
Russian Practice. Mr. McDonald is fluent in Russian and has represented the Government of the Russian Federation as amicus curiae in related appellate actions over the past four years, in addition to his successful defense of a Russian cosmetics manufacturer in an opposition proceeding at the Trademark Trial and Appeal Board (TTAB). In 2013, he addressed the Russian Supreme Court (in Russian) on intellectual property procedure in U.S. courts and administrative agencies, and was subsequently one of only four non-Russians (or Eurasians) and the only American named to the Advisory Council of the Russian Court of Intellectual Property.
Export Licensing. Mr. McDonald was responsible for export control compliance on behalf of a U.S. technology company during the Cold War engaged in shipments of array processors and related technology to the Eastern Bloc and China. In 2006 he represented a Russian bank in one of the only successful court actions against the U.S. Treasury Department and OFAC arising out of the wrongful imposition of economic sanctions. He has prepared export control compliance programs for information technology companies and software developers, and has been engaged by other law firms to provide specialized advice on export licensing and international trade.
Mr. McDonald is a 1979 graduate of the American University, Washington College of Law (1979), and a member of the District of Columbia Bar with undergraduate degrees in Economics and Russian from the University of California, in addition to a national Russian language scholarship at Leningrad State University (1976).
In 2008 Mr. McDonald defended the American Bar Association in the only suit for trademark infringement ever brought against the ABA. In 2014 he litigated the first successful fraud case at the Trademark Trial and Appeal Board (TTAB) since In re Bose Corp. (Fed. Cir. 2009). In 2017 he was engaged for international public advocacy by the Pharmaceutical Research and Manufacturers of America. Representative cases include:
American Bar Association Section of International Law:
-Chair, Vice-Chair, Co-Chair and Senior Advisor, International Intellectual Property Rights Committee (1999 – present)
-Vice-Chair and Senior Advisor, Committee on Privacy, E-Commerce & Data Security (2007 – present)
-Editor in Chief, International Data Protection and Online Security Newsletter (2009-2010)
-Liaison to American Bar Association Section of Intellectual Property Law (current)
-Outstanding Volunteer of the Year Award (2007-2008)
-Creator and Editor in Chief, ABA Journal of Newly Independent States of the Former Soviet Union (1995-97)
-Translation of Russian Civil Code and other draft legislation into English for ABA Central and Eastern Europe Law Initiative (CEELI)(1991-1994)
International Trademark Association (INTA)
-Member, INTA Internet Committee, Whois Subcommittee (2009-2015)
-Leader, INTA Task Force on Translation and Transliteration of Whois Contact Data (2014-2015)
-Leader, INTA Task Force on ICANN Procedures for Conflicts Between WHOIS and National Privacy Laws (2014-2015)
-Leader, Working Group on Substituted Service of Process by Electronic Mail (2008-2012)
-Author, Working Group Report on Electronic Service of Process on Fictitious Owners of Commercial Websites, presented to INTA Board of Directors and Executive Committee (Miami, FL, Nov. 11, 2009)
Rotary Club of Arlington, Virginia (member, 1986 – 2009, president, 2005)
Cosmos Club, Washington, D.C. (2009-present)
McDonald, B. A., Ugryumov, V. & Kolesnikov, D. (2018) Setbacks in Regulatory Data Protection Confront Innovative Drug Developers in the Russian Federation, The International Lawyer, Volume 51, (Number 2), pp. 171-194. (Russian translation)
McDonald, B. A., Ugryumov, V. & Kolesnikov, D. (Winter 2018) Compulsory Licensing of Pharmaceutical Patents in the Russian Federation Threatens Foreign and Domestic Drug Developers. Quarterly Journal of the American Intellectual Property Law Association (AIPLA), Volume 46, (Number 1). pp.1-60. (Russian translation)
Commercialization of Intellectual Property by Universities and Academic Institutions in the United States: Sample Agreements and Secondary Sources, presented to the Intellectual Property Court of the Russian Federation, Moscow, Russia (Nov. 25, 2016).
Panel Presentation, Legal and Regulatory Issues in the Russian Pharmaceutical Industry, Wistar Institute, Philadelphia (June 12, 2015).
Remedies Against Fictitious and Anonymous Service Mark Counterfeiting, 7(1) Landslide 47 (Sept./Oct. 2014).
Issues Raised by the Exercise of Judicial Power in the Development of Standards, Guidelines and Definitions Relating to Unfair Competition and Intellectual Property, presented to the Court of Intellectual Property of the Russian Federation, Moscow, Russia (Dec. 27, 2013).
Intellectual Property Procedure in U.S. Courts and Administrative Tribunals, Journal of the Russian Court of Intellectual Property (August 2013) (in Russian).
Why Trademark Owners Must Lead the Fight for Accountability in E-Commerce, World Trademark Review (Aug./Sept. 2011).
Copyright, Patent and Trademark Developments in the Russian Federation, Russia Business Watch (Spring 2011).
Russian IP Laws Meet Essential WTO Standards, Russia Business Watch (Spring 2009).
The Great Domain Debate, Statement of International Trademark Association (INTA), European CEO (June 2008).
Sites in Shadow: Typosquatters on the Web Don’t Deserve the Mask of Anonymity, Legal Times (June 26, 2006).
Service Mark Counterfeiting And Worse: U.S. Companies Resort to Self-Help in Canada When Cross-Border Law Enforcement Falls Short, Metropolitan Corporate Counsel (Sept. 2004).
Recommended Corporate Policy for Trademark and Service Mark Use and Protection, The Metropolitan Corporate Counsel, Vol. 8, Nos. 5 & 6 (May/June 2000).
A full list of Mr. McDonald’s publications and appearances is available here.