With more than 19 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 constantly uses 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, or helping to resolve a conflict so it never reaches litigation, Scott has the relevant experience to tackle any trademark-related issue.
Recently, Scott completed a four-month secondment at Abbott Laboratories. While he was there, he coordinated the rebranding of four significant product lines, as well as helping to integrate a new subsidiary’s intellectual property. He also updated the trademark and copyright notices for Abbott and remains involved in several ongoing oppositions and disputes on Abbott’s behalf. Working in-house benefited Scott immensely because it gave him a unique outside counsel perspective into how best to communicate with in-house counsel and the marketing teams they often advise and into what his in-house counsel clients really need in terms of outside counsel communications. His communications needed to be direct and to the point and written in a way that non-lawyers could understand not only the legal risks but the business risks at play in their decisions. Scott’s experiences with Abbott are ones that he will continue to draw from for many future matters.
Scott also serves as an adjunct professor for the University of Arizona’s Intellectual Property Clinic. The Intellectual Property Clinic (IP Clinic) provides free legal counseling and services on IP matters to individuals, start-ups, and small business having limited financial resources. Examples of the services provided by the IP Clinic are general IP counseling; trademark searches and advice on choosing a strong trademark; preparing and filing patent, trademark, and copyright applications; counseling on trademark infringement issues; and IP-related agreements and licensing. These services are provided by students of the University of Arizona James E. Rogers College of Law, under the supervision of Scott and his colleagues. This experience has given Scott a great perspective on how start-ups work and the unique issues and challenges they face in trying to protect their intellectual property.
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. He has also conducted several trade secret audits to help his clients identify and then protect their most valued commercial advantages.
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.
Representation of Givenchy – a Louis Vuitton Moët Hennessy luxury brand known for its haute couture clothing, accessories, and perfume – in the negotiation of a relationship deal with prominent actress and singer Ariana Grande as the new face of Givenchy. Ariana will be featured in Givenchy’s Fall-Winter 2019 campaign, to be unveiled in July (Announced: May 2019).
Representation of 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.
Representation of LVMH Moët Hennessy Louis Vuitton (LVMH) in strategic corporate and intellectual property transactions related to the formation and launch of Fenty by Rihanna, a new luxury fashion maison of ready-to-wear clothing, shoes, and accessories. The historic collaboration will make Rihanna the first woman to create an original LVMH brand, and Fenty the first LVMH-established fashion house in more than 30 years (Announced: May 2019).
Representation of LVMH Luxury Ventures, an investment arm of LVMH Moët Hennessy Louis Vuitton SE, aimed at taking minority stakes in emerging, iconic brands, in its 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.
Professional & Community Activities
- Selected, Leading Lawyers Network (2009-2019)
- Selected, World Trademark Review 1000, The World’s Leading Trademark Professionals (2018)
- Selected, Super Lawyers
- Illinois Super Lawyers (2014-2019)
- Illinois Rising Stars (2009, 2012-2013)
- Selected, IP Star, Managing Intellectual Property (2013-2015)
- Selected, World Trademark Review 1000, (2011-2015)
- Selected, "Forty Illinois Attorneys Under 40 to Watch," Law Bulletin (2012)
- Adjunct Professor, Intellectual Property Clinic, University of Arizona
- 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
- June 7, 2019 – Barack Ferrazzano Client Alert
- Client Alert: U.S. Supreme Court Rules Copyright Registration Required to File Copyright Infringement LawsuitMarch 12, 2019 – Barack Ferrazzano Client Alert
- February 14, 2019 – Barack Ferrazzano Client Alert
- December 11, 2018 – Barack Ferrazzano Client Alert
- April 17, 2018 – Barack Ferrazzano Client Alert
- October 18, 2017 – Inside Counsel
- September 26, 2017 – Barack Ferrazzano Client Alert
- September 25, 2017 – Author, Inside Counsel
- September 25, 2017 – Author, Inside Counsel
- September 5, 2017 – Author, Daily Business Review
- August 1, 2017 – Barack Ferrazzano Client Alert
- June 9, 2017 – Author, Corporate Counsel
- March 27, 2017 – Inside Counsel
- March 23, 2017 – Inside Counsel
- March 2, 2017 – Barack Ferrazzano Client Alert
- March 2, 2017 – Barack Ferrazzano Client Alert
- February 24, 2017 – Corporate Counsel
- February 21, 2017 – Corporate Counsel
- February 9, 2017 – Inside Counsel
- February 2, 2017 – Inside Counsel
- January 4, 2017 – Barack Ferrazzano Client Alert
- Client Alert: Federal Banking Regulators Expand Banks Eligible for Extended 18-Month Examination CycleDecember 20, 2016 – Barack Ferrazzano Client Alert
- December 6, 2016 – Barack Ferrazzano Client Alert
- November 8, 2016
- October 28, 2016 – Inside Counsel
- October 2016 – ABA Entertainment and Sports Lawyer, Fall 2016 Volume 33 Issue 1
- October 6, 2016 – Barack Ferrazzano Client Alert
- September 30, 2016 – Barack Ferrazzano Client Alert
- September 28, 2016 – Inside Counsel
- September 26, 2016 – Inside Counsel
- September 26, 2016 – Law360
- September 21, 2016 – Inside Counsel
- August 2016 – ABA Entertainment and Sports Lawyer, Summer 2016 Volume 32 Issue 4
- August 15, 2016 – Inside Counsel
- July 28, 2016
- July 12, 2016 – Inside Counsel
- June 14, 2016 – Inside Counsel
- June 1, 2016 – Inside Counsel
- May 13, 2016 – Barack Ferrazzano Client Alert
- May 12, 2016 – Inside Counsel
- May 2, 2016 – Inside Counsel
- April 26, 2016 – Inside Counsel
- April 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 YearApril 5, 2016 – Inside Counsel
- March 30, 2016 – Inside Counsel
- March 25, 2016 – Inside Counsel
- March 21, 2016 – Inside Counsel
- March 18, 2016 – Law360
- March 2016 – Entertainment Law & Finance Newsletter, Law Journal Newsletters
- February 10, 2016 – Inside Counsel
- January 27, 2016 – Inside Counsel
- January 25, 2016 – Inside Counsel
- January 4, 2016 – Inside Counsel
- December 10, 2015 – Inside Counsel
- March 27, 2010
- May 14, 2019 – Barack Ferrazzano Press Release
- May 10, 2019 – Barack Ferrazzano Press Release
- February 6, 2019 – Barack Ferrazzano Press Release
- January 2019 – Barack Ferrazzano Press Release
- January 24, 2019
- July 25, 2018 – Barack Ferrazzano Press Release
- February 2, 2018 – Quoted, New York Post
- January 25, 2018 – Barack Ferrazzano Press Release
- December 18, 2017 – Barack Ferrazzano Press Release
- September 25, 2017 – Press Release
- September 1, 2017
- July 27, 2017 – Above the Law
- July 13, 2017 – Barack Ferrazzano Press Release
- June 8, 2017
- January 17, 2017
- November 1, 2016
- March 2, 2016