Volunteer Spotlight: Karen F. MacDonald

Published: June 15, 2019

Christine C. Guggenheimer Dinsmore & Shohl LLP Cincinnati, Ohio, USA

This month’s spotlight shines on Karen F. MacDonald, partner and registered patent and trademark agent at Norton Rose Fulbright Canada LLP in Vancouver, Canada, and a current member of INTA’s Anticounterfeiting Committee.

For many years as a member of the Young Practitioners Committee, Ms. MacDonald was in charge of First-Time Orientation at the INTA Annual Meeting. She enjoyed working with “amazing” session panelists, as well as helping attendees “survive” their first Annual Meeting. One of her favorite tricks was to “pull a pair of flip-flops out of [her] purse” to show members of the audience how to save their feet between meetings.

When not involved in INTA matters, Ms. MacDonald’s daily work covers litigation, anticounterfeiting enforcement, and trademark prosecution. She finds cross-examinations in counterfeiting cases particularly rewarding, describing her strategy as “maneuvering the web of lies that the counterfeiters attempt to weave, and getting them to provide as many discrepancies as possible to destroy their credibility.”

Ms. MacDonald’s experience with counterfeiters has led her to believe that the online sale of counterfeit items is “one of the biggest threats facing brands right now,” especially since direct-to-consumer platforms limit the ability of online marketplaces to combat illegal activity. She believes that it is essential to find better ways to work with these online marketplaces. Most importantly, she notes, international bodies such as Internet Corporation for Assigned Names and Numbers (ICANN) should be encouraged to better regulate and identify the bad actors, adding that INTA helps to address the problem by increasing the reach of educational programs via effective engagement on social media.

In particular, Ms. MacDonald believes that INTA’s Unreal Campaign is an exceptional campaign, which educates young consumers about the dangers of counterfeits, and would like to see more educational programs expanded to reach this audience-to ensure that by the time they are making their own consumer choices and entering the job market, these young adults are fully aware of how counterfeiting harms society.

In addition to her job, Ms. MacDonald enjoys hiking in the woods and walking along the seawalls in Greater Vancouver with her husband, three children, and their dog. She also holds a brown belt in Tae Kwon Do; her husband and two older children already having earned black belts.

When asked to describe a trademark that she particularly likes, Ms. MacDonald shares the story of taking her eldest son as a toddler to get a muffin at Starbucks nearly every day. When he was a year and half old, he noticed the STARBUCKS logo on a frisbee at a park, and gleefully exclaimed “muff!” (his word for “muffin”), which led Karen to exclaim to her husband, “See, this is the power in what I do!”

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2019 International Trademark Association