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).