FORMER USPTO TRADEMARK EXAMINING ATTORNEY

 

In 2016, Scott was identified as “one to watch” in the World Trademark Review 1000 list of Leading Trademark Professionals.  Prior to forming Sisun Law, Scott was an attorney with prominent New York City firms, and a judicial law clerk to now-retired judge John A. O’Shaughnessy.  As a Trademark Examining Attorney with the U.S.P.T.O, Scott experienced firsthand the review and prosecution of trademark applications, as well as representation of the U.S.P.T.O. before the T.T.A.B. in ex parte appeals.

 

Scott works closely with entrepreneurs, start-ups, mid-sized companies and large established entities in various industries to help them successfully reach their business and legal goals.  

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With more than fifteen years of experience, Scott has successfully handled numerous intellectual property and business law matters.  He has prosecuted, managed, enforced and litigated numerous trademark and copyright matters.  He has drafted and negotiated a variety of IP and business law agreements and has represented clients before the USPTO, TTAB, federal and state courts.  

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PUBLICATIONS, SPEAKING AND EXPERIENCE

 

Scott has consistently been recognized as a Leading Trademark Professional in the World Trademark Review 1000 list of Leading Trademark Professionals.

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Scott has served on various intellectual property committees such as the Trademark and Unfair Competition and Fashion Law Committees of the New York City Bar, and the Enforcement Sub Committee of the International Trademark Association (INTA).

Scott also writes and speaks extensively on a wide variety of intellectual property topics, including trademark registration and prosecution, licensing, sports, entertainment, and gTLD matters.  He has been a moderator and panelist at numerous intellectual property-related events.  He is also co-author of Loss of Trademark Rights a Practice Note published by Practical Law.

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He earned a Masters of Law in Intellectual Property from the Benjamin N. Cardozo School of Law.  Among his judicial and government positions, Scott began his career in New York as a judicial law clerk to Judge John A. O’Shaughnessy, and was a Trademark Examining Attorney with the United States Patent and Trademark Office in Alexandria, Virgina.  Scott’s private sector attorney experience includes the intellectual property group at leading mid-sized law firm Carter Ledyard & Milburn LLP in New York and Special Counsel with the AmLaw 200 international law firm, Kelley Drye & Warren, LLP.

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REPRESENTATIVE MATTERS INCLUDE

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• Overcame numerous United States Patent and Trademark Office trademark application refusals.

• Management of worldwide trademark and copyright portfolio, filing, and enforcement programs.

• Established IP monetization strategies for clients in various fields including alcohol, fashion and technology.

• Registered, managed and enforced foreign trademark, copyright and domain name matters.  

• Negotiation and drafting of numerous product licensing and merchandising agreements for clients in many industries including fashion and consumer products.

• Defense of cease and desist letters and potential actions resulting in settlement and co-existence.

• Cost-effectively trained in-house team on copyright registration program.

• Successfully advised beauty tech startup on IP related matters and ultimate acquisition by major media conglomerate.

• Created and implemented IP due diligence strategies.

• Positive results in enforcement of numerous trademark and domain name matters resulting in ceasing of use and registration of trademarks and transfer of domain names to client.

• Handled T.T.A.B. and federal copyright and trademark infringement matters.  

• Advised on social media and advertising programs.

• Educated clients on brand protection and selection and value-driven intellectual property programs.

• Cleared and advised on new trademarks for individuals and multi-national companies for use and registration.

• Negotiated music royalty license agreements with BMI, ASCAP and SESAC.

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ADMISSION IN THE FOLLOWING JURISDICTION

 

State of New York

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INTERESTS

 

When not assisting clients, Scott trains for various road races with friends and clubs, including this past New York City Marathon.