Bruce A. McDonald

Shareholder
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Bruce McDonald is the chair of the Trademark and Copyright Practice Group at Buchanan Ingersoll & Rooney. He 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, including a foreign language scholarship at Leningrad State University (1976). He represented the American Bar Association in the successful defense of a trademark infringement action – the only known intellectual property infringement action against the ABA in its 150-year history – in Collen IP v. ABA, 07-1861 (ESH) (D.D.C. 2008).
Federal Trademark and Copyright Litigation. Bruce joined Buchanan in February 2010 with 20 years of experience in federal trademark and copyright infringement actions going back to his role as first chair counsel in Nugget Distributors' Cooperative of America, Inc. v. Mr. Nugget, Inc., 776 F. Supp. 1012 (E.D.Pa. 1991), and Chocoladefabriken Lindt & Sprungli Akitengesellschaft v. Rykoff-Sexton, Inc., 24 USPQ2d 1236 (S.D.N.Y. 1992). Current and recent court cases and administrative proceedings involving his appearance as lead counsel include:

  • Federal Treasury Enterprise Sojuzplodoimport v. SPI Group Ltd., et al., 11-4109-cv (2d Cir. 2013)(Stolichnaya Vodka Trademark Litigation) (counsel for Government of the Russian Federation appearing as amicus curiae)
  • Johnson & Johnson v. Obschestvo s Ogranitchennoi Otvetstvennostiu WDS, Opposition No. 91182207 (TTAB 2013) (counsel for Russian cosmetics manufacturer in defense of trademark application against opposition by J&J)
  • Transamerica Corp. Transtrend, BV, Cancellation No. 92057574, Opposition Nos. 91210715 and 9210753 (TTAB) (pending) (counsel for petitioner and opposer in consolidated actions against Dutch financial services company)
  • Transamerica Corp. v. Lewis, Opposition No. 91213453 (TTAB) (pending) (counsel for opposer)
  • AESP, Inc. v. Signamax, LLC, 1:13cv1089 (E.D.Va.)(pending)(counsel for U.S. subsidiary of Czech corporation in trademark ownership dispute)
  • Personal Water Craft Product v. Flyboard, Inc., Opposition No. 91210383 (TTAB)(counsel for French company in trademark ownership dispute)
  • Pace v. Atrya SAS, 4:12-cv-355-RAS-DDB (E.D.Tex. 2013)(counsel for defendant in declaratory trademark infringement action)
  • Transamerica Corp. v. Moniker Online Privacy Services, LLC, Case No. 09-60973-CIV-ALTONAGA/BROWN (S.D.Fla. 2009)(counsel for plaintiff in landmark ruling that 1999 Anticybersquatting Act does not immunize Internet domain name registrar from liability for service mark counterfeiting by fictitious and anonymous customers)
  • Therese C. Pfrimmer Int'l Ass'n of Deep Muscle Therapists v. DiOrio, # 2:09-cv-04434-MMB (E.D.Pa. 2010)(counsel for trade association in trademark infringement action against former member)
  • Urban Institute v. Fincon Services et al., 1:09-cv-00572-HHK (D.D.C. 2009)(counsel for plaintiff in declaratory action involving copyright infringement action in Pakistan)
  • Elmer Candy Corp. v. Jane Jenni & Associates et al., 5:10-cv-05047-JLH (W.D.Ark. 2010)(counsel for plaintiff in declaratory action involving copyright infringement allegations)
  • Five Four, Inc. et al. v. Wal-Mart Stores, Inc. and CGS Industries, Inc., 2:09-cv-09431-GW (CWx)(C.D. Cal. 2010)(counsel for defendant in trademark counterfeiting action)
Russian Practice. Bruce attended Leningrad State University in the Soviet Union on a national Russian language scholarship in 1976 and is fluent in Russian. His practice includes representation of Russian businesses and individuals in the U.S. and he recently concluded the successful defense of a Russian toothpaste manufacturer in a trademark opposition proceeding at the U.S. Patent and Trademark Office, Johnson & Johnson, Inc. et al. v. WDS, Opposition No. 91182207 (TTAB).

In May 2012 he filed an amicus brief on behalf of the Russian Government in the Stolichnaya Vodka Trademark Litigation (2d Cir. 2012). On April 22, 2013, he gave a presentation, in Russian, at the Supreme Arbitrazh Court of the Russian Federation, on intellectual property procedure in the U.S. courts and administrative tribunal, at a ceremony commemorating the establishment of the Court of Intellectual Property of the Russian Federation, where he was the only speaker invited from the United States. In September 2013 he was the first American named to the scientific and technical advisory board of the Court of Intellectual Property of the Russian Federation. His Russian practice has included: 

  • Participation in defense of a trade dress infringement action in the Supreme Arbitrazh Court of the Russian Federation on behalf of an Italian candy manufacturer against a Russian competitor, Soremartec S.A. v. Landrin (2009)
  • First-chair counsel in successful litigation against the Office of Foreign Assets Control (OFAC) on behalf of Russian bank resulting in removal of asset freeze imposed under Emergency Sudanese Sanction Regulations. Bank Soyuz v. Office of Foreign Assets Control, Case No. 1:05CV01073 (D.D.C.) (funds released Feb. 2, 2006)
  • Representation of Russian investors in the United States (current)
  • Consultation to Russian state-owned enterprises in connection with disputes over trademark ownership and infringement (current)
  • Participation in delegation of four individuals including president of the ABA in meetings with leaders of the Russian Judiciary (Moscow, September 2009)
  • Technical assistance to the Republic of Georgia in the field of intellectual property including extended sojourns in Tbilisi under auspices of the Georgian Copyright Office, Georgian Patent and Trademark Office, and Georgian parliamentary committees; nationally televised address to joint session of Georgian government (in Russian) on WTO accession (1996-1997)

Export Licensing. Bruce has experience in export licensing, including responsibility for export control compliance on behalf of a U.S. technology company engaged during the Cold War in shipments of array processors and related technology to the Eastern Bloc and China. He has prepared export control compliance programs for information technology companies and software developers.

Labor and Employment Litigation. Bruce spent four years in the Office of the Solicitor at the U.S. Department of Labor and appeared as lead counsel in dozens of oral arguments before the U.S. Courts of Appeals including 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).

Energy and Natural Resource Litigation. Bruce's litigation experience includes five years in an oil and gas federal litigation boutique where he appeared as counsel of record in cases including 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).