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Scott M. Douglass

Shareholder

Scott Douglass is an intellectual property shareholder with a national legal practice in the areas of trademarks, copyrights, and data privacy.

Professional Biography


Mr. Douglass concentrates his practice in the areas of trademarks, copyrights, and data privacy. He litigates trademark, trade dress, and copyright claims in federal courts across the country. He represents companies and individuals acting as both rightsholders asserting their rights and defendants accused of infringing others' rights.

Beyond litigation, Mr. Douglass advises clients on the adoption and protection of brands and registration at the U.S. Patent and Trademark Office (USPTO). With years of experience prosecuting trademarks at the USPTO and before the Trademark Trial and Appeal Board, Mr. Douglass is able to help clients anticipate obstacles and plan for brand growth and product launches to maximize the value of their intellectual property (IP). He also helps clients through online domain name enforcement and Digital Millennium Copyright Act (DMCA) takedown notices and by protecting clients' works and creative expressions in the form of copyright registration at the U.S. Copyright Office.

Mr. Douglass has extensive experience advising companies in IP licensing agreements, non-disclosure and confidentiality agreements, asset sales, software and end-user licenses, and website terms and privacy policies. He is better able to advise his clients by maintaining a diverse practice litigating and advising on all aspects of trademark and copyright rights. Mr. Douglass assists clients in a wide range of industries including film and television, music, entertainment, beer and spirits, food and restaurants, professional services, financial services, and pharmaceutical products.

During law school, Mr. Douglass clerked for the Honorable John Bryant with the U.S. District Court for the Middle District of Tennessee, as well as the Honorable Charmiane Claxton with the U.S. District Court for the Western District of Tennessee. Before attending law school, he worked as a legislative aide to two United States Senators and studied Arabic in the Middle East.

  • Litigation

  • Defeated a motion for temporary restraining order and preliminary injunction against a music festival client.

  • Achieved a favorable settlement after filing a motion for summary judgment on behalf of a client accused of federal trademark infringement by a Fortune 500 company.

  • Defended a client against federal trade dress infringement claims, resulting in a voluntary non-suit by the plaintiff.

  • Enforced trademark rights and copyright in a client's nationally recognized brand against multiple defendants who sought to unlawfully use the client's brand for commercial development.

  • Achieved a favorable settlement in a federal trademark infringement suit against an accused infringer who adopted client's logo for advertising to client's competitors.

  • Successfully pursued a motion for sanctions against a defendant in a federal trademark infringement case.

  • Achieved a favorable settlement on behalf of a client accused of federal trademark counterfeiting and infringement by a Fortune 500 company.

  • Prevailed on a motion to dismiss for a lack of personal jurisdiction on behalf of defendants improperly sued in federal district court.

  • Achieved a favorable settlement in a federal trademark infringement suit against a competitor who violated a decade-old settlement agreement.

  • Initiated the take-down of more than a dozen infringing domain names under the Uniform Domain-Name Dispute-Resolution Policy (UDRP).

  • Prosecution, Licensing, and Counseling

  • Registered more than 100 trademarks with the U.S. Patent and Trademark Office.

  • Overcame USPTO Trademark Office Actions for mere descriptiveness, likelihood of confusion, geographic descriptiveness, and other grounds.

  • Protected the intellectual property rights and exposure to liability through licensing, non-disclosure, and settlement agreements of brands, products, and inventions for diverse clients.

  • Listed in The Best Lawyers in America "Ones to Watch" for Intellectual Property Law and Litigation: Intellectual Property (2021 – 2023)
  • Listed in Mid-South Super Lawyers "Rising Stars" in Intellectual Property (2018 – 2022)
  • Participant – Nashville Bar Foundation Leadership Forum (2019 – 2020)
  • Member – American Intellectual Property Law Association
  • Member – Copyright Society of the South
  • Member – International Trademark Association
  • Member – Memphis Bar Association
    • Co-chair, Business Law Section (2021 – present)
  • Member – Nashville Bar Association
    • Co-chair, Business Law Committee (2019 – 2020)
    • Former Member of Board of Directors, Young Lawyers Division
  • Member – Tennessee Bar Association
  • Member – Tennessee Intellectual Property Law Association
  • Member – Licensing Executives Society
    • Former Chair – Webinar Committee
    • Former Chair – Emerging Enterprises Committee
  • Co-author – "Licensing in Bankruptcy," Scott Douglass, Dominic Rota, and Michael Wennerlund, American Bankruptcy Trustee Journal, Vol. 38, Iss. 2 (Spring 2022)
  • Co-author – "Thinking of Rebranding Post-Pandemic? The 'Tacking' Doctrine May Say Otherwise," Tennessee Bar Journal (May/June 2021)
  • Co-author – "Trademarks + The Significance of Source," Barista Magazine (October/November 2019)
  • Co-author – "Right Before Remedy – Supreme Court Requires Businesses to Register Their Copyrights Before Enforcement," Association of Corporate Counsel Tennessee Focus (First Quarter 2019)
  • Co-author – "Cybersecurity and Your Company: Don't Wait Until You've Been Hacked To Get Serious About Security," Attorney At Law Magazine (March 2017)
  • "Drafting Ethical Cease and Desist Letters for Trademark and Copyright Infringers," Association of Corporate Counsel Tennessee (2021)
  • "'So You Want to Start A . . .' – Intellectual Property Considerations for the 'Non-Startup' New Business," Nashville Bar Association, Business Law Institute (2020)
  • "Ethics & Professionalism in Intellectual Property Law," Tennessee Bar Association, Intellectual Property CLE Blast (2019)
  • "Leveraging Tech for Legal," Roundtable Hosted by Evolve Law
  • "IP Curriculum," Entrepreneur Center Accelerators (Project Music/1440)
  • "Intellectual Property: Nuts and Bolts," National Business Institute, Manufacturing Law Event, Nashville

Industries

Education

  • Wake Forest University School of Law, J.D., 2012
    • Managing Editor – Wake Forest Journal of Law & Policy
  • Rhodes College, B.A., 2006, cum laude

Admissions

  • Tennessee, 2012
  • U.S. District Court for the Middle District of Tennessee
  • U.S. District Court for the Western District of Tennessee
  • U.S. District Court for the Eastern District of Tennessee
  • U.S. District Court for the Western District of Texas
  • U.S. Court of Appeals for the Sixth Circuit
  • U.S. Court of Appeals for the Federal Circuit

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