James L. Scott

Partner | jscott@wnj.com | V-Card | Profile PDF Grand RapidsT +1.616.752.2469F +1.616.222.2469 Jim Scott's practice focuses on trademark, copyright and domain name acquisition, enforcement and commercial exploitation. He serves an international clientele on a variety of intellectual property issues, with significant experience in managing and protecting worldwide trademark portfolios. Jim represents clients across several industries, including the Internet, consumer goods and products, automotive supply, furniture manufacturing, health care... Read More

Jim Scott's practice focuses on trademark, copyright and domain name acquisition, enforcement and commercial exploitation. He serves an international clientele on a variety of intellectual property issues, with significant experience in managing and protecting worldwide trademark portfolios. Jim represents clients across several industries, including the Internet, consumer goods and products, automotive supply, furniture manufacturing, health care, publishing, sporting goods, food products, insurance, financial services and software. He also represents nonprofit organizations and individuals.

  • Experience
  • Biography
  • News
  • Publications
  • Leadership
  • Speaking Engagements

Experience

  • Advises clients on global trademark selection, clearance, protection, maintenance and enforcement of trademarks, service marks, trade names and domain names
  • Assists clients with developing international trademark filing and enforcement strategies, and manages the filing and prosecution of trademark applications in countries worldwide
  • Renders opinions on the availability and proper use of trademarks
  • Negotiates and drafts technology and intellectual property acquisition, development and licensing agreements, as well as trademark licensing, settlement and coexistence agreements
  • Represents clients before the U.S. Patent and Trademark Office (USPTO) in preparing, filing and prosecuting trademark applications, through the opposition and appeal process
  • Protects and enforces trademark rights, including opposition and cancellation actions before the Trademark Trial and Appeal Board (TTAB)
  • Provides in-house training programs for client employees on trademark selection, clearance and enforcement
  • Manages trademark enforcement proceedings in countries throughout the world
  • Works with U.S. Customs and Border Protection to record IP rights and seize counterfeit products
  • Reviews and evaluates international intellectual property portfolios in corporate acquisitions, mergers and restructurings
  • Works closely with clients in using technology to streamline and systematize the trademark workflow process to render effective and efficient service

Industries

Practices

Education

  • University of Notre Dame J.D. 1995 cum laude
  • Albion College B.A. 1992 magna cum laude

Admitted

  • 1995, Michigan

Honors and Awards

  • Fellow, Michigan State Bar Foundation
  • Received Client Choice Award in Recognition of Excellence in Client Service, Intellectual Property - Trademarks
  • Note Editor, Notre Dame Law Review

Bar Associations

  • American Bar Association
    Business Law Section, Intellectual Property Law Section, Science and Technology Law Section
  • State Bar of Michigan
  • Grand Rapids Bar Association

Publications

Blog Posts

Professional Affiliations

  • International Trademark Association
  • International Technology Law Association
  • American Intellectual Property Law Association
  • Automation Alley
  • aimWest

Community Affiliations

  • Pregnancy Resource Center
    Board of Directors (2007-Present)

Speaking Engagements

  • Software Audits and Licensing, cosponsored seminar with CDH (November and April 2004)
  • Technology and the Law, cosponsored with ISG and BDO Seidman (September 2004)

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