Scott M. Oslick

703.684.2537  |  Email  |  vCard  |  Biography

Assistant:

Judy Schmidt
jschmidt@merchantgould.com
612.336.4736

Education

Bar Admissions

Professional Affiliations

Speaking Engagements

Articles

Recent Decisions

Notable Cases

Scott is an intellectual property lawyer with a focus on trademarks and copyrights. He advises clients on protecting their intellectual property rights and devises strategies for developing clients' intellectual property portfolios. Scott has experience in all areas of trademark prosecution, including trademark clearance and availability opinions, preparing and prosecuting trademark applications and handling appeals before the Trademark Trial and Appeal Board. Scott represents clients in ex-parte appeals, infringement matters, cancellation proceedings and third-party oppositions before the Trademark Trial and Appeal Board. He also has experience in representing clients in Federal Court.

Scott has handled trademark, copyright and domain name matters for clients in a wide variety of industries, including consumer electronics, e-commerce, information technology, food and beverages, clothing, sports and general business. He handles matters for Fortune 500 companies, small businesses and individual entrepRenurs, as well as international clients located in the Canada, the United Kingdom, Europe, Australia, Brazil and Israel.

Prior to joining Merchant & Gould in 2006, Scott served as an Examining Attorney for the United States Patent & Trademark Office for seven years. During that time, Scott examined over 9000 trademark applications, including applications filed electronically and under the Madrid Protocol. Scott represented the Trademark Office in numerous ex parte appeals and oral arguments before the Trademark Trial and Appeal Board. As a result of his experience at the Trademark Office, Scott is incredibly familiar with the trademark prosecution process. Scott consistently utilizes this knowledge to the benefit of his clients.

Education

University of Maryland, College Park, 1994
American University, Washington College of Law, 1997

Bar Admissions

Maryland, 1997

Professional Affiliations

American Bar Association
ABA Forum on the Entertainment and Sports Industries
International Trademark Association (INTA)
Minnesota Intellectual Property Association

Speaking Engagements

GETTING INTO THE GAZETTE: Tips For ®esponding To ®efusals, ®equests and ®equirements, The 2009 Intellectual Property Institute, Faculty, September 24, 2009.

Inside the USPTO'S Closet, September 22, 2009.  

It's In the Way That You Use It (Specimen Basics and Avoiding Functionality Refusals), January 26, 2009.

Specimens of Use and Trademark Application Filing Bases: An Overview
May 9, 2008

An Overview of Trademark Prosecution from Filing to Registration
January 8, 2008

Behind the Scenes at the USPTO - The Examiner's Perspective
Webinar, September 26 - 27, 2007

The Basics of Trademark Prosecution
July 18, 2007

Articles

What's Needed to Own a Business Method?, by Tony Zeuli, Scott Oslick and Josh Graham, Bench & Bar November, 2009.

The Bose Wave Mark: Honest Mistakes No Longer Considered Fraud in U.S., by Christopher J. Schulte and Scott M. Oslick, 369 ITMA Review 29, October 2009.

Recent Decisions and Notable Cases

Fireman's Fund Insurance Company v. Forsyte Corporation, Claim No. FA0708001055246 (NAF, September 17, 2007) - Successfully argued for the transfer of the domain name firemansfundinsurance.com to Fireman's Fund Insurance Company.

The Debt Doctors, LLC v. Mountain Marketing Group, LLC, Cancellation No. 92047140 (T.T.A.B. August 1, 2007) - Successfully prosecuted trademark cancellation action on behalf of Petitioner, The Debt Doctors, LLC, involving the mark 1-800-DEBT DOC.

In re Gags and Games, Inc. (TTAB 2005) - Successfully defended the US Patent and Trademark Office in an appeal involving a likelihood of confusion refusal between the marks HALLOWEEN USA and HALLOWEEN U.S.A. and Design. The Board agreed that marks registered on the Supplemental Register are entitled to protection under Section 2(d) of the Lanham Act.

In re King Chapman & Broussard Consulting Group, Inc. (TTAB 2004) - Successfully defended the US Patent and Trademark Office in an appeal involving a descriptiveness refusal of the mark CO-MANAGEMENT intended for use in connection with management consulting to provide organization change consulting and team facilitation and education consulting to provide breakthrough education.

In re Pucci Corporation (TTAB 2004) - Successfully defended the US Patent and Trademark Office in an appeal involving a likelihood of confusion refusal between the marks PUCCI, intended for use in connection with custom tailored apparel and accessories therefore, and EMILIO PUCCI, for children's clothing and ladies' tailored apparel.