Scott has over 25 years of experience representing famous brands. Scott is ultra-responsive and possesses the unique ability to explain his creative approach to protecting and policing famous brands to non-legal business and marketing professionals.
Scott is co-chair of BFKN’s Intellectual Property Group and a member of the Luxury Group. His practice focuses primarily on U.S. and international trademark prosecution, beginning with policing, managing, and protecting the expansive trademark portfolios of BFKN’s clients. Scott oversees complex worldwide search projects, answers complicated clearance questions for new product launches, and provides cost-effective analysis and strategy for discreetly resolving trademark disputes, many of which are high profile and at risk of becoming public. Scott’s vast U.S. and international trademark prosecution experience allows him to help clients manage, grow, and protect their IP portfolios. From clearing a new mark in multiple jurisdictions, registering it with the relevant trademark offices, policing it against infringers and defending a client’s use from threat of attack, through resolving potential conflicts before they reach litigation, Scott deftly tackles any trademark-related issue.
Scott’s practice particularly focuses on representing famous brands. Famous brands are sophisticated and dynamic with unique characteristics: they face fast-moving product cycles, they focus on legacy and heritage, they maintain an extraordinary commitment to quality, and they are now facing an increasing globalization of trends and styles. Legal strategy is crucial, and timing is everything. In this digital age when opportunities and threats can arise at a moment’s notice, famous brands need a legal business partner who understands their objectives and can navigate them through the unique demands of being a famous brand. Scott understands the distinctive issues that famous brands face because he has served as the primary outside IP counsel for some of the world’s most iconic brands for years, including Louis Vuitton, Christian Dior, Lamborghini, and Tiffany.
In order to effectively protect the worldwide scope of all of the brands he handles, Scott has developed an expansive network of foreign associates through years of building personal relationships, with whom he has negotiated cost certainty to benefit his clients, and who share Scott’s vision for how brands need to be curated and protected.
- State of Illinois
- Georgetown University, J.D., 1998
- Northwestern University, B.A. 1995
- 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 that were looking to get a jump on his client’s trademark filings for pirating purposes.
- Scott has conducted intellectual property audits for more than 25 corporate clients. During the audit process, he 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 of previously unrecognized corporate assets.
- Scott helped represent LVMH Moët Hennessy Louis Vuitton in strategic intellectual property transactions related to the formation and launch of Fenty by Rihanna, a luxury fashion maison of ready-to-wear clothing, shoes, and accessories. The historic collaboration made Rihanna the 1st woman to create an original LVMH brand, and Fenty the 1st LVMH-established fashion house in more than 30 years.
- Scott helped with all aspects of the intellectual property due diligence, from searching to applications to assignments, and was intimately involved across all aspects of LVMH Luxury Ventures, an investment arm of LVMH Moët Hennessy Louis Vuitton SE, making an equity investment in Gabriela Hearst LLC. Launched by its founder and namesake, Gabriela Hearst, the company is a New York-based luxury ready-to-wear, leather goods, and lifestyle company.
- Scott helped represent Louis Vuitton enter into a collaboration with Jeff Koons – well-known American artist – to create a 51-piece capsule collection of handbags and other small leather goods emblazoned with great works of art. The collaboration was greeted with a huge amount of fanfare.
- When LVMH Moët Hennessy decided to acquire a majority stake in Off-White LLC, the trademark owner of Virgil Abloh's Off-White brand, Scott helped in the intellectual property due diligence surrounding the investment, which was no small task given how brand conscious Virgil Abloh was and how ground-breaking Off White’s take on intellectual property continues to be.
- When LVMH Luxury Ventures wanted to take a minority stake in Aimé Leon Dore, a New York-based streetwear brand with a large cult following, Scott handled the intellectual property due diligence. Established in Queens in 2014 by Teddy Santis, Aimé Leon Dore has gained a large following for its mainline collections and collaborations with brands such as Clarks, Drake’s and New Balance. Each of these collaborations had to be analyzed and all of the intellectual property implications had to be understood before a deal could move forward.
- When LVMH Luxury Ventures wanted to take a minority stake in Hodinkee, the foremost authority on all things watches, Scott handled the intellectual property due diligence. Other investors in the round include TCG (an affiliate of The Chernin Group), True Ventures, Future Shape, GV (formerly, Google Ventures), as well as six-time Super Bowl champion Tom Brady and seven-time Grammy winner John Mayer. Scott had his worked cut out for him getting his hands around all of the intellectual property issues Hodinkee presented, including persona rights, trademarks, copyrights and patents.
- Scott helped Center Cut Hospitality, owner of the famous Del Frisco’s and Del Frisco’s Double Eagle restaurant concepts, sell its Sullivan’s restaurant concept and purchase the bartaco and Barcelona Wine Bar concepts. In connection with these transactions, Scott helped with all aspects of the IP due diligence, from searching to applications to assignments, Scott was intimately involved across all aspects of the deals. After the transactions were consummated, Scott continues to represent not only the two new concepts but continues to represent Sullivan’s as well.
- Main Event Entertainment, L.P. offers a unique experience featuring state-of-the-art bowling, multi-level laser tag, thrilling high ropes adventure courses, captivating game rooms featuring the latest video and amusement, stylish billiards, energetic bars, and high-quality restaurants across its 41 centers across the U.S. It was rebranded this past year and Scott helped every step of the way, from searching and clearing the new logos to apply to register them with the United States Patent and Trademark Office (USPTO).
- When Dave & Buster’s opposed Main Event’s trademark application for one of its widely used slogans, Scott worked to settle the dispute amicably. We reached a favorable settlement that preserved our client’s registration and right to use its slogan. This was a very high-stakes matter. Had Dave & Buster’s prevailed, Main Event would have been required to change physical signage, among other things including all social media accounts, across the country.
- When L Catteron decided to invest in ClassPass, Inc., Scott helped in the intellectual property due diligence surrounding the investment. Recognized as one of Forbes’ Next Billion Dollar Startups, ClassPass is the leading membership to the world’s largest fitness network, using a technology-enabled platform to connect members to a variety of fitness experiences in 50 cities worldwide. Scott helped with all aspects of the intellectual property due diligence for this investment, including searching, evaluating, and strategizing over a number of complicated IP issues.
- Scott helped represent L Catterton in connection with a $29 million USD growth investment in Il Makiage, an Israeli-based cosmetics company. Scott helped with all aspects of the intellectual property due diligence for this investment, including searching, evaluating, and strategizing over a number of complicated intellectual property issues.
- When L Catterton, a global consumer-focused private equity firm, desired to acquire Taxa Outdoors, a manufacturer of lightweight, mobile habitats for outdoor adventure, they called on Scott to handle the intellectual property due diligence. Scott and the BFKN IP team analyzed trademarks and patents in helping get to the bottom of the acquisition.
- When L Catterton, a global consumer-focused private equity firm, desired to invest in Aleph Farms, a cultivated meat company that grows steaks directly from non-genetically modified animal cells, Scott and the BFKN IP team were called in to analyze Aleph Farms’ trademarks and patents and help explain the potential scope of its protection.
- Scott helped represent Moët Hennessy USA in connection with the acquisition of Colgin Cellars to increase Moët Hennessy’s growing luxury-wine portfolio. The client acquired 60% of the winery and its vineyards, as well as the brand which remains exclusive and has been described as a Napa Cabernet “cult-classic.”
- When Moët Hennessy USA, Inc. decided to acquire Woodinville Whiskey Company, a craft spirits company, Scott conducted an in-depth intellectual property due diligence review of Woodinville’s entire intellectual property portfolio. After the acquisition, the company replaced its prior intellectual property company with our firm.
- When Moët Hennessy decided that it wanted to acquire Joseph Phelps Vineyards, a nearly five-decade-old producer of fine wines from Napa Valley and, more recently, the Sonoma Coast, it asked Scott to lead the intellectual property due diligence. In connection with this transaction, Moët Hennessy purchased the portfolio of Joseph Phelps, which includes the Insignia brand, a Bordeaux-style red blend from Napa. The deal was incredibly complicated implicating persona rights, in connection with Joseph Phelps himself, trademark rights and additional intellectual property concerns.
- When Moët Hennessy decided to enter into a partnership with the world famous Jay-Z, Moët Hennessy acquired a 50% stake in Jay-Z’s Champagne brand, Armand de Brignac, often referred to as “Ace of Spades”, Scott helped in the intellectual property due diligence, which forced him and the Moët Hennessy team to address a myriad of thorny international trademark issues.
- Scott helped represent Kendo Holdings, Inc. – a cosmetics and beauty incubator company owned by LVMH Moët Hennessy Louis Vuitton and affiliated with Sephora – in strategic transactions related to the formation and launch of the brand Fenty Beauty by Rihanna. The brand has been so well received that TIME magazine named it one of the "25 best inventions of 2017." Scott continues to handle the related trademark portfolio today.
- After 32 years of success in skin care, Kendo Holdings, Inc. – a cosmetics and beauty incubator company owned by LVMH Moët Hennessy Louis Vuitton and affiliated with Sephora – decided to rebrand and repackage the entire lineup into four different color-coordinated franchises, which included both old and new products. Scott helped coordinate this transition and continues to help the brand with new brand clearances and filing strategies.
- When Rihanna wanted to expand her beauty brand with her company Fenty Beauty so that it included items such as clips, barrettes, scrunchies, wigs, curlers, "elastic bands for hair binding," "decorative articles for the hair," hairbrushes, hair extensions and combs, Scott helped file the trademark and lead the intellectual property due diligence. The trademark will expand her brand which has already been met with broad commercial and critical success.
- When Pendulum, the investment and advisory platform focused on businesses and brands owned by entrepreneurs of color, acted as lead investor, in an investment into Scotch Porter, which offers beard, hair, skin, fragrance and wellness products, Scott helped run the intellectual property due diligence. This was a difficult project given the scope of Scotch Porter’s product offerings – both product wise and geographically.
- When Pendulum, the investment and advisory platform focused on businesses and brands owned by entrepreneurs of color, wanted to invest in A Kids Company About, which is a black-owned, multichannel, kids media company that aims to challenge, empower, and lead important conversations that conventional children's programming has largely ignored, Pendulum asked Scott to lead the intellectual property due diligence. Given the scope of A Kids Company About’s media endeavors, the project was difficult and time-consuming but ultimately fruitful as the investment went forward.
- February 2, 2018
- The Best Lawyers in America© (2024)
- Trademark Law
- Illinois Intellectual Property, Chambers USA (2021-2023)
- Leading Lawyers Network (2009-2023)
- Super Lawyers
- Illinois Super Lawyers (2014-2022)
- Illinois Rising Stars (2009, 2012-2013)
- World Trademark Review 1000, The World’s Leading Trademark Professionals (2011-2015, 2018-2021)
- IP Star, Intellectual Property (2013-2015, 2021-2022)
- “Forty Illinois Attorneys Under 40 to Watch,” Law Bulletin (2012)
Scott is extremely responsive and has a very wide knowledge base. I've found his practicality to be spot-on and accurate, very pleased with his guidance.