With more than 17 years of experience in trademark law and a cadre of high-profile clients, Scott has earned an enviable reputation for his experience, business-focused advice and counseling.
Whether appearing before a federal district judge, offering counsel on international trademark filing strategies, clearing a new global brand, advising on the nuances of trade secret law or explaining how social media marketing can create undue legal risks, Scott gets the job done quickly and cost-effectively so his clients can get back to work.
Scott's practice focuses primarily on U.S. and international trademark prosecution and litigation. As such, he can use his time-earned skills to help his large corporate clients manage and grow their trademark portfolios. Whether the project involves clearing a new mark in multiple jurisdictions, registering the mark with the relevant trademark offices, policing the mark against infringers or defending a client's use of a mark from threat of attack, Scott has the relevant experience to tackle any trademark-related issue.
Because social media has become an integral way for his clients to interact with their customers, Scott has become an industry thought leader on its impact on trademark protection and enforcement. He has helped many clients craft social media policies to protect intellectual property while still allowing them to exploit new technologies to positively interact with customers. His involvement in this ever changing field has prompted him to write numerous articles and provide state-of-the-art presentations aimed at explaining how companies can navigate the unchartered waters of leading social media sites, while still protecting corporate intellectual property and avoiding infringement risks. He has also been quoted in the Chicago Tribune, Bloomberg BNA, The Chicago Daily Law Bulletin, InsideCounsel and MacNewsWorld, and has appeared on Fox Chicago News.
Scott's clients also rely on his experience in trade secret law, where he focuses on its use in the employment context, particularly in connection with non-compete agreements, confidentiality agreements and restrictive covenants.
In a coordinated effort with over 70 foreign associates, Scott cleared and applied to register a multi-national corporate client's new trademark in over 75 countries on the same day. Scott devised the difficult international filing strategy to stave off potential infringers from around the world.
Scott has conducted intellectual property audits for more than 25 corporate clients. In the process, he has created social networking policies, web site terms and conditions, and bring-your-own-device policies; conducted on-site inspections leading to the discovery of a number of trade secrets and copyrights; and drafted restrictive covenants and non-disclosure agreements. Scott's tireless attention to detail during these audits has uncovered and protected millions of dollars in corporate assets.
Scott represented a local entrepreneur in a heated trademark dispute that had raged for nearly a decade before his involvement. Scott suggested and conducted court-aided mediation in an effort to finally resolve the matter. The court found in favor of Scott's client, awarding damages and injunctive relief, rejecting the defendant's trademark application and transferring its domain name to Scott's client.
Professional Activities & Honors
- Selected, Illinois Super Lawyers (2014-2016)
- Selected, IP Star, Managing Intellectual Property magazine (2013-2015)
- Ranked, World Trademark Review 1000 (2011-2015)
- Selected, Leading Lawyers Network (2009-2014)
- Selected, Illinois Rising Stars, Super Lawyers (2009, 2012-2013)
- Selected, "Forty Illinois Attorneys Under 40 to Watch," Law Bulletin (2012)
- Member, American Bar Association
- Member, Chicago Bar Association
- Member, Illinois State Bar Association
- Member, International Trademark Association
- Member, Marques - The Association of European Trade Mark Owners
Articles & Publications
- 06/9/2017 – , Corporate Counsel
- 03/27/2017 – Inside Counsel
- 03/23/2017 – Inside Counsel
- 03/2/2017 – Barack Ferrazzano Client Alert
- 03/2/2017 – Barack Ferrazzano Client Alert
- 02/24/2017 – Corporate Counsel
- 02/21/2017 – Corporate Counsel
- 02/9/2017 – Inside Counsel
- 02/2/2017 – , Inside Counsel
- 01/4/2017 – Barack Ferrazzano Client Alert
- Client Alert: Federal Banking Regulators Expand Banks Eligible for Extended 18-Month Examination Cycle12/20/2016 – Barack Ferrazzano Client Alert
- 10/28/2016 – , Inside Counsel
- 10/2016 – , ABA Entertainment and Sports Lawyer, Fall 2016 Volume 33 Issue 1
- 09/28/2016 – , Inside Counsel
- 09/26/2016 – , Law360
- 09/26/2016 – , Inside Counsel
- 09/21/2016 – , Inside Counsel
- 8/2016 – , ABA Entertainment and Sports Lawyer, Summer 2016 Volume 32 Issue 4
- 08/15/2016 – , Inside Counsel
- 07/28/2016 –
- 07/12/2016 – , Inside Counsel
- 06/14/2016 – , Inside Counsel
- 06/1/2016 – , Inside Counsel
- 05/12/2016 – , Inside Counsel
- 05/2/2016 – , Inside Counsel
- 04/26/2016 – , Inside Counsel
- 04/11/2016 – Barack Ferrazzano Client Alert
- Extended Argument Comes to Naught: Opposer Loses Claim of Fraud on USPTO in TTAB’s First Precedential Ruling This Year04/5/2016 – , Inside Counsel
- 03/30/2016 – , Inside Counsel
- 03/25/2016 – , Inside Counsel
- 03/21/2016 – , Inside Counsel
- 03/18/2016 – , Law360
- 3/2016 – , Entertainment Law & Finance Newsletter, Law Journal Newsletters
- 02/10/2016 – Inside Counsel
- 01/27/2016 – , Inside Counsel
- 01/25/2016 – , Inside Counsel
- 01/4/2016 – , Inside Counsel
- 12/10/2015 – , Inside Counsel