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The co-chair of the Firm’s Intellectual Property Group and a member of the Fashion, Luxury & Retail and FinTech Groups, Scott has 25+ years of experience representing high-profile clients in all types of intellectual property matters. Whether devising unique strategies to provide maximum international trademark protection, protecting famous brands from infringements, searching and clearing new global brands on a rushed timeline, reviewing new marketing programs, or advising on risks with respect to social media marketing, Scott gets the job done efficiently and cost-effectively so his clients can get back to business.

Trademark Prosecution

Scott’s in-depth U.S. and international trademark prosecution experience allows him to help clients manage, grow, and protect their trademark 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 it reaches litigation, Scott deftly tackles any trademark-related issue.

Luxury Goods Expertise

The luxury industry is sophisticated and dynamic with unique characteristics: fast-moving product cycles, a focus on legacy and heritage, an extraordinary commitment to quality, and the increasing globalization of trends and styles. Strategy is crucial and timing is everything. In this digital age when opportunities and threats can arise at a moment’s notice, you need a legal business partner who understands your company’s objectives and can navigate you through the unique demands of the luxury industry.  Scott understands the unique issues that luxury brands face because he has been effectively counseling some of the world’s most iconic brands, including Louis Vuitton, Christian Dior, Givenchy, Lamborghini and Tiffany for years.  In order to effectively protect the worldwide scope of these types of brands, Scott has cultivated an intricate network of foreign associates, built over years of personal relationships, with whom he has negotiated cost certainty, to keep costs down, and who share Scott’s vision for how luxury brands need to be curated and protected. 

Inside Abbott Laboratories

In 2018, Scott had the added benefit of a secondment to Abbott Laboratories. In that role, he coordinated the rebranding of four significant product lines, helped to integrate a new subsidiary’s intellectual property, and updated the trademark and copyright notices across the entire Abbott product line. Scott’s in-house experience has given him a unique perspective into the needs and pressures facing in-house counsel and the business units they advise. As a result, he understands how important it is to quickly respond to questions with practical and easily understandable answers, and how to work as a business partner to find creative solutions to problems, rather than to just say “no.”

IP Due Diligence

Scott frequently works on high profile intellectual property due diligence projects on behalf of a number of firm clients, including recent acquisitions or investments in a craft whiskey company, a world-renowned vineyard, a famous champagne, up and coming beauty brands, and an electric car battery company, just to name a few. In these types of projects, Scott’s comprehensive trademark experience allows him to fully understand and analyze the target company’s trademark portfolio, and to forecast future issues the acquiror should consider in determining its purchase price and post-acquisition intellectual property strategy.

Social Media

Because social media has become an integral way for his clients to interact with their customers, Scott has become an industry thought leader on social media’s impact on trademark protection and enforcement. He represents several social media influencers and has helped multiple clients craft social media policies to protect intellectual property while still allowing them to use new technologies to positively interact with customers. He has authored numerous articles and provided state-of-the-art presentations aimed at teaching companies how to navigate the uncharted waters of leading social media sites while still protecting corporate intellectual property and avoiding infringement risks. He has been quoted in the Chicago Tribune, Bloomberg BNA, The Chicago Daily Law Bulletin, InsideCounsel, and MacNewsWorld, and has appeared on Fox Chicago News.

Professor of Trademarks

Scott currently serves as a Supervising Attorney and Professor of Trademarks for Indiana University’s Maurer School of Law’s Intellectual Property Clinic after previously holding the same position at the University of Arizona’s Intellectual Property Clinic, both of which provide free legal counseling and services on IP matters to individuals, start-ups, and small businesses having limited financial resources. As a result of Scott’s supervision of the IP Clinic, he developed a deep knowledge-base regarding the unique intellectual property issues and challenges start-ups face.


Representative Experience

  • Trademark Registration
    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.
  • IP Audits
    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.
  • Entrepreneur Trademark Dispute
    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.
  • LVMH & Rihanna Fenty Luxury Maison
    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.
  • LVMH & Gabriela Hearst
    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.
  • Ole Henriksen Rebrand
    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.
  • Center Cut Hospitality’s Restaurant Concepts
    In a busy year of transactions, 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 intellectual property 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 Rebrand
    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., rebranded this past year and Scott helped every step of the way, from searching and clearing the new logos to applying to register them with the United States Patent and Trademark Office (USPTO).
  • Dave & Buster’s I. L.P. v. Main Event Entertainment, L.P., Opposition No. 91/232,388 (TTAB)
    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.
  • Boston Dental Group, LLC v. Affordable Care, LLC
    Scott represented Affordable Dental, a leading dental services organization that owns a family of trademarks, in a declaratory judgment action filed by Boston Dental, after our client filed a petition to cancel the plaintiff’s registration for “Affordable Dental” based on likely confusion with our client’s registration for “Affordable Dentures.” On summary judgment, we successfully got Boston Dental’s claim dismissed, and we defeated its affirmative defenses. The matter was crucial to our client’s nationwide business, as it operates under the trademark at issue in more than 225 locations in 40 states. The matter settled on favorable but confidential terms, under which, among other things, Boston Dental voluntarily cancelled its federal trademark registration.
  • L Catterton & ClassPass
    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 intellectual property issues.
  • Moët Hennessy & Colgin Cellars
    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.”
  • Moët Hennessy & Woodinville Whiskey
    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.
  • L Catterton & Il Makiage
    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.
  • Kendo & Fenty Beauty by Rihanna
    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.
  • LVMH & Jeff Koons
    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.
  • Moët Hennessy & Joseph Phelps
    When 
    Moët Hennessy, a division of LVMH Moët Hennessy Louis Vuitton SE, 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.
  • LVMH Moët Hennessy & Off-White
    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.
  • Moët Hennessy & Jay-Z Carter Partnership
    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.
  • Pendulum & Scotch Porter
    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.
  • L Catterton & Taxa Outdoors
    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.
  • LVMH Luxury Ventures & Aimé Leon Dore
    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.
  • L Catterton & Aleph Farms
    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 into to analyze Aleph Farms’ trademarks and patents and help explain the potential scope of its protection.
  • Pendulum & Scotch Porter
    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.
  • LVMH Luxury Ventures & Hodinkee
    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. With other investors in the round including 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.
  • Moët Hennessy & Joseph Phelps
    When Moët Hennessy, a division of LVMH Moët Hennessy Louis Vuitton SE, 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.
  • Rihanna & Fenty Beauty
    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.

Activities & Honors

  • Ranked, Illinois Intellectual Property, Chambers USA (2021-2022)
  • Selected, Leading Lawyers Network (2009-2022)
  • Selected, Super Lawyers
    • Illinois Super Lawyers (2014-2022)
    • Illinois Rising Stars (2009, 2012-2013)
  • Selected, World Trademark Review 1000, The World’s Leading Trademark Professionals (2011-2015, 2018-2021)
  • Selected, IP Star, Intellectual Property (2013-2015, 2021-2022)
  • Selected, "Forty Illinois Attorneys Under 40 to Watch," Law Bulletin (2012)
  • Adjunct Professor, Intellectual Property Clinic, Indiana University
  • 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
  • Former Adjunct Professor, Intellectual Property Clinic, University of Arizona

Speaking Engagements & Presentations

Articles & Publications

News

Education

Georgetown University, J.D., 1998

Northwestern University, B.A. 1995

Bar & Court Admissions

  • State of Illinois
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