SCOTT M. DOUGLASS

Senior Associate

smd@iplawgroup.com
615-242-2400

EDUCATION
  • J.D., Wake Forest University School of Law
  • B.A., Rhodes College, cum laude
BAR ADMISSIONS
  • Tennessee

Scott 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.

Mr. Douglass prosecutes trademarks in the U.S. Patent and Trademark Office and before the Trademark Trial and Appeal Board. He also helps clients register copyrights at the U.S. Copyright Office. And, he helps clients maximize the value of their intellectual property through online domain name enforcement.

Beyond litigation, Mr. Douglass advises clients on the adoption, protection, and registration of brands and product launches. He assists clients in a wide range of industries including film, television, music, entertainment, beer and spirits, food and restaurants, professional services, financial services, and pharmaceutical products.

Mr. Douglass has extensive experience advising companies in IP licensing agreements, non-disclosure and confidentiality agreements, asset sales, software and end-user licenses, website terms and privacy policies, and Digital Millennium Copyright Act (DMCA) takedown notices. He is better able to advise his clients by maintaining a diverse practice litigating and advising on all aspects of copyright and trademark rights.

Experience

Litigation

  • Achieved favorable settlement in a federal trademark infringement suit against client’s competitor who adopted client’s mark
  • Enforced trademark rights and copyright in client’s nationally recognized brand against multiple defendants who sought to use unlawfully the client’s brand for commercial development
  • Achieved 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 motion for sanctions against a defendant in a federal trademark infringement case
  • Achieved favorable settlement on behalf of client accused of federal trademark counterfeiting and infringement by a Fortune 500 company
  • Prevailed on a motion to dismiss for lack of personal jurisdiction on behalf of defendants improperly sued in federal district court
  • Achieved favorable settlement in a federal trademark infringement suit against a competitor who violated a decade-old settlement agreement
  • Initiated take-down of more than a dozen infringing domain names under the Uniform Domain-Name Dispute-Resolution Policy (UDRP)

Prosecution, Licensing, & Counseling

  • Registered nearly 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
Court Admissions
  • 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. Court of Appeals for the Sixth Circuit
Professional Memberships
  • International Trademark Association
  • Copyright Society of the South
  • American Intellectual Property Law Association
  • Nashville Bar Association
    • Business Law Committee Chair 2019, 2020
  • Tennessee Bar Association
  • Tennessee Intellectual Property Law Association
Professional & Community Service
  • Nashville Bar Association
    • Co-Chair of Business Law Section, 2020
  • St. George’s Episcopal Church
  • Phoenix Club of Nashville
  • Nashville Bar Association Young Lawyers Division
    • Board of Directors (former)
  • Licensing Executives Society
    • Webinar Committee Chairman, Emerging Enterprises Committee, (former)
Presentations & Publications

Presentations

  • “Ethics & Professionalism in Intellectual Property Law” TBA IP CLE Blast 2019
  • “Data Security and the Law,” Patterson IP CLE Memphis
  • “IP Licensing: Pitfalls and Tips”, Patterson IP CLE Nashville
  • “Ethics in eDiscovery”, Patterson IP CLE Memphis
  • “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

Publications

  • Trademarks + The Significance of Source, Scott Douglass, Heath Henley, Barista Magazine, Vol. 15, Iss. 4 (Oct.-Nov. 2019)
  • Right Before Remedy — Supreme Court Requires Businesses to Register Their Copyrights Before Enforcement, Scott Douglass, Wade Sims, Association of Corporate Counsel Tennessee Focus, (Q1 2019)
  • Cybersecurity and Your Company: Don’t Wait Until You’ve Been Hacked To Get Serious About Security, Scott Douglass, Wade Sims, Attorney At Law Magazine, Vol. 3, No. 1 (March 2017)
Professional Recognition
  • Nashville Bar Foundation Leadership Forum, 2019-2020
  • Mid-South Super Lawyers “Rising Stars” in Intellectual Property, 2018, 2019
  • Wake Forest Journal of Law & Policy (former)
    • Managing Editor
  • Wake Forest Honor Council (former)
    • Vice-Chairman
Outside the Office
  • Taking an alternative approach to the IP world, Scott grew up in Memphis and then spent several years in Washington, D.C. and the Middle East before returning to Tennessee.