Bruce A. McDonald

Shareholder
T:703 838 6590  |   F:703 836 2021 Alexandria
Bruce McDonald is Trademark Practice Group leader of the Firm's Intellectual Property Section with 30 years of experience in federal court litigation including representation of the largest professional association in the U.S. His federal court experience spans a variety of areas including administrative, trial and appellate litigation involving trademark, copyright and intellectual property law, as well as trademark couseling, investigation, clearance, prosecution and maintenance. He also has extensive litigation experience in diverse areas ranging from export licensing, securities, energy and natural resources, and employment to an appearance as counsel for amicus in a death penalty case at the Supreme Court, Medellin v. Dretke, 544 U.S. 660 (2005).

Bruce's experience in federal trademark infringement actions goes back to his role as lead counsel for the plaintiff 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). More recently, he has appeared as lead counsel in the following cases:

  • Counsel for defendant in Johnson & Johnson v. OOO “WDS,” Opposition No. 91182207 (TTAB).
  • Counsel for amicus curiae, The Institute of Legislation and Comparative Law Under the Government of the Russian Federation, in the STOLICHNAYA vodka trademark case, Federal Treasury Enterprise Sojuzplodoimport v. SPI Group Ltd., et al., 11-4109-cv (2d Cir., filed Jan. 18, 2012).
  • Counsel for plaintiff in Transamerica Corp.  v. Moniker Online Services LLC, 672 F. Supp. 2d 1353 (S.D.Fla. 2009) (holding that 1999 Anticybersquatting Consumer Protection Act does not immunize Internet domain name registrar from liability for service mark counterfeiting arising from "pay-per-click" advertising revenues shared with fictitious and anonymous customers).
  • Counsel for American Bar Association in Collen IP v. ABA, 07-1861 (ESH) (D.D.C.) (order dismissing all claims with prejudice Sept. 12, 2008).
  • Counsel for USAID contractor in action for declaration of ownership in U.S. copyright and injunction against copyright infringement action in Pakistan, Urban Institute v. Fincon Services et al., 1:09-cv-00572-HHK (D.D.C.2010).
  • Counsel for plaintiff in action for declaration of non-infringement of U.S. copyright in caricatures and designs, Elmer Candy Corp. v. Jane Jenni & Associates et al., 5:10-cv-05047-JLH (W.D.Ark. 2010).
  • Counsel for garment manufacturer in defense of trademark infringement action, Five Four inc. v. Wal-Mart Stores Inc. et al., CG 09 9431 (GW)(Cwx)(C.D.Cal. 2010).
  • Counsel for Czech corporation in defense of trademark cancellation action, AESP Inc. v. Signamax, LLC, No. 92046676 (TTAB)(pending as of Oct. 2010).
  • Counsel for mortgage lender in opposition involving allegations of good faith intent to use, Nationstar LLC v. Ahmad, No. 91177036 (TTAB)(pending as of Oct. 2010).
  • Pace v. Atrya SAS, 4:12-cv-355-RAS-DDB (E.D.Tex. 2013)(counsel for defendant in declaratory trademark infringement action).
  • 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).

Bruce's educational background includes a national Russian language scholarship, and his fluency in Russian has led to representation of Western companies in the Russian Federation and Russian companies in the U.S. His experience in this area includes:

  • Successful court action against U.S. Department of the Treasury and Office of Foreign Assets Control, Bank Soyuz v. OFAC, No. 1:05-cv-01073 (D.D.C.)(funds released Feb. 2, 2006).
  • Participation in successful defense of trade dress infringement verdict before the Supreme Arbitrazh Court of the Russian Federation, Soremartec S.A. v. Landrin (2009).
  • Consultation to Russian state-owned enterprises in connection with disputes over trademark ownership and infringement (2006-present).
  • Participation in delegation of four individuals including president of the ABA in meetings with leaders of the Russian Ministry of Economy and Association of Russian Jurists (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).
  • Sole speaker from the United States in a publicly broadcast ceremony at the Supreme Arbitrazh Court of the Russian Federation commemorating the establishment of the Intellectual Property Court of the Russian Federation, in Russian, on judicial procedure in U.S. intellectual property cases (April 22, 2013).