Scott W. Johnston

Partner
Minneapolis
3200 IDS Center, 80 South Eighth Street
Minneapolis, MN 55402
D: 612.371.5274
Contact My Assistant
Sandra Lindemeier
D: 612.371.5252

Education

Illinois Institute of Technology, Chicago—Kent College of Law
J.D., high honors, 1994

University of Colorado
B.S. Electrical Engineering, 1989

Bar and Court Admissions

Court of Appeals for the Federal Circuit, 2007
Court of Appeals for the Eighth Circuit, 1999
U.S. District Court, 1995
U.S. Patent and Trademark Office, 1995
Minnesota State Bar, 1994

Professional Affiliations

International Trademark Association
American Intellectual Property Law Association
Minnesota Intellectual Property Law Association
Minnesota State Bar Association

Awards & Recognition

Selected as one of The World’s Leading Trademark Professionals by WRT 1000, 2013-2015
IP Stars by Managing IP, 2013-2014
Best Lawyers in America by The Best Lawyers in America, 2009-2015
Minnesota Super Lawyers, 2008-2017
Top 50 Under 45, IP Law & Business, 2008
Minnesota Rising Stars, 2004

Publications & Speaking

Understanding the Scope and Impact of the TTAB Rule Changes, December 8, 2016

Cyberworld: Protecting Your Brand in Cyberspace, Moderator, September 24, 2015

The Impact of the Supreme Court’s B&B Hardware Decision on TTAB Practice and Practitioners, 2015 Midwest Intellectual Property Institute (Sept. 17, 2015)

Navigating the Trademark Trial and Appeal Board (TTAB) - Panelist, Atlanta Bar Association IP SpringPosium (April 10, 2015)

INTA Roundtable: Lean and Mean—Are You Effectively Managing Your Global IP Practice? - Presenter (March 26, 2015)

Pre-Filing Litigation Strategies—An International Perspective, INTA Annual Meeting (May 20, 2009)

The New TTAB Rules in Practice, IP Institute (Sept. 26, 2008)

Protecting Voss Water Minnesota Law & Politics (August/September 2008)

TTAB Dramatically Changes Rules of Practice Before Trademark Trial & Appeal Board, IP Today (September 2007)

Changes to TTAB Rules of Practice (July 2007)

Section 2(a) and the Trademark Act and Eliminating Bias, William Mitchell College of Law (June 6, 2007)

Proposed Changes to TTAB Practice (March 7, 2006)

Ethical Issues For Trademark Practitioners, The MIPLA CLE Stampede (May 5, 2005)

Trademark Essentials, Learning to Work Effectively With Trademarks (July 16, 2004)

The Madrid Protocol and New International Trademark Strategies (February 24, 2003)

Program Chair, Trademark Litigation CLE (June 2002)

Similarities and Differences Between Trademark Practice in Federal District Court and the Trademark Trial and Appeal Board, MILE Trademark CLE (April 2001)

News From the U.S., Intellectual Property Journal, V. 15 (Carswell, December 2000)

Trademark Surveys, ALI/ABA Advanced Trademark Litigation seminar (December 2000)

Trademark Oppositions, Los Angeles Intellectual Property Law Association, Trademark Practice CLE (January 2000)

News From the U.S., Intellectual Property Journal, V. 14 (Carswell, September 2000)

Co-Author: Prosecuting Trade Dress Cases, Trade Dress Law, Second Edition, (Aspen Law and Business 1999)

Scott focuses his practice on trademark law, with an emphasis on trademark policing, enforcement and litigation. He provides strategic counseling on how best to secure and perfect brands around the world. Through a combination of registration, customs registration, copyright registration, trademark opposition, online take downs, UDRPs and litigation, Scott effectively and efficiently protects and defends his clients’ intellectual property.

The best attorneys balance a healthy skepticism and natural caution with innovation and creativity, looking for ways to prevent and solve problems big and small. In his quest to simplify matters for clients, Scott developed and patented Brandscape®, a tool which presents trademark information visually so businesspeople with no familiarity with trademarks can easily understand the strength of their mark and how it is positioned against third parties.

Scott has also served as a court-appointed expert in trademark law and assisted with settlement as an expert and neutral.

Scott's greatest personal accomplishment is his wonderful family, including five children. When he's not helping clients, he's outdoors with the crew, skiing, hiking, boating, or playing in the yard.

Representative Cases

Cedar Valley Exteriors, Inc. v. Prof'l Exteriors, Inc., 2016 U.S. Dist. LEXIS 84868 (D. Minn. June 29, 2016): Served as a court-appointed expert witness in trademark law, including testifying about trademark registrations, trademark prosecution, color marks, functionality, incontestability, likelihood of confusion and remedies.

Odom's Tennessee Pride Sausage Company v. FF Acquisition, LLC (Fed. Cir. 2010): Defended appeal of TTAB Order before the Court of Appeals for the Federal Circuit.

George & Co., LLC v. Xavier Enterprises, Inc. (D. Minn. 2009): Prosecuted trademark counterfeiting, trademark infringement, unfair competition and copyright infringement claims; secured temporary restraining order against defendants.

3M Company v. Masimo Corporation (TTAB 2010): Prosecuted trademark opposition to RED mark for medical devices, namely, patient monitoring sensors and cables.

Ecolab Inc. v. EcoSure Pest Control (D. Minn. 2009): Prosecuted trademark infringement and unfair competition action relating to ECOSURE mark.

Xcel Energy v. Delta Faucet (D. Minn. 2009): Prosecuted trademark infringement and unfair competition action relating to RESPONSIBLE BY NATURE mark.

Polaris Industries v. Polaris Inc. (D. Minn 2009): Prosecuted trademark infringement and unfair competition action relating to POLARIS mark.

CHS Inc. v. AgPro Industries, LLC (N.D. Ga 2009): Prosecuted trademark, unfair competition and cybersquatting action relating to AGPRO mark.

Genmar v. Rinker Boat Company (D. Minn. 2009): Prosecuted trademark and unfair competition action relating to Glastron Spear design mark.

Odom's Tennessee Pride Sausage Company v. FF Acquisition, LLC (TTAB April 17, 2009): Defended trademark opposition and prevailed on summary judgment that there was no likelihood of confusion between the design marks at issue.

ADC Telecommunications, Inc. v. Ad.C. Technologies (D. Minn. and ICANN 2009): Prosecuted trademark infringement and cybersquatting claims relating to ADC mark.

ADC Telecommunications, Inc. v. Changzhou New Jiexum Electric Co., Ltd. (Beijing High Court Sept. 2008): Successfully appealed adverse decision on trademark opposition in China to Beijing High Court relating to registration of client's house mark and logo.

CHS Inc. v. Sun Country Seeds (D. Minn. 2008): Prosecuted trademark and unfair competition action in the U.S. and Canada relating to FEATHERED FRIENDS mark.

Waymouth Farms, Inc. v. Jill Frechtman (TTAB March 19, 2007): Prosecuted trademark opposition; prevailed on summary judgment and defended appeal to the Court of Appeals for the Federal Circuit.

Featherlite v. Sundowner Trailers, Inc., (D. Iowa 2007): Prosecuted trademark infringement action in federal court involving SUPERSTOCK trademark. Resulted in settlement whereby defendant phased out use and paid plaintiff's attorney fees.

NameProtect, Inc. v. Brand Protect, Inc. and Brandimensions, Inc., (D. Wis. 2007): Prosecuted trademark and unfair competition action regarding NAMEPROTECT and BRANDPROTECT marks.

SUPERVALU INC. et. al v. Wal-Mart, Inc., Opposition No. 91173727 (TTAB 2007): Prosecuted trademark opposition involving Wal-Mart's effort to register EDLP (Every Day Low Prices).

BioScan, Inc. v. Biolight Patent Holding AB, Cancellation No. 92027044 (TTAB April 25, 2007): Prosecuted trademark cancellation action on behalf of Petitioner, BioScan, Inc., involving the mark BIOLIGHT for light therapy products. The Board found that Registrant had failed to prove use in commerce prior to its filing date, and that Petitioner had proven use or analogous use of the BIOLIGHT mark prior to Registrant's filing date. The Board therefore awarded priority to Petitioner and found that a likelihood of confusion exists. Accordingly, the Board granted the petition and ordered that Registrant's registration be canceled.

Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100 (TTAB 2007): Prosecuted trademark cancellation action against decorative hardware manufacturer using the trademark DEVONSHIRE on door hardware, based on Kohler's prior common law rights in the same mark for toilets and lavatories. The Board found Kohler had priority, the goods were related, and there was a likelihood of confusion. Accordingly, the petition was granted and the registration ordered to be canceled.

Platinum Performance, Inc. v. Farnam Companies, Inc., Civil Action No. CV05 2041-RGK (C.D. Cal. 2005): Prosecuted trademark infringement and unfair competition action to enforce Platinum Performance's PLATINUM PERFORMANCE name and mark for nutritional supplements for horses against Farnam Companies' PLATFORM PERFORMANCE mark for horse feed and nutritional supplements.

Schwan's IP, LLC and Schwan's Consumer Brands v. Kraft Pizza Company, Civil Action No. 04-125 (MJD/JGL) (D. Minn. 2004): Prosecuted unfair competition claim relating to use of the marks BRICK OVEN and BRICK OVEN STYLE in connection with frozen pizza.

B&K Industries, Inc. v. Kohler Co., Case No. 04 C 03454 (N.D. Ill. 2004): Trademark infringement dispute regarding B&K's use and attempted registration of the mark CALLISTO in view of Kohler's KALLISTA mark.

Saint Mary's Press of Minnesota v. DeVore & Sons, Inc. d/b/a Fireside Catholic Publishing and Fireside Bible Publishers, Civil Action No. 04-01561-DWF-SRN (D. Minn. 2004): Defended trademark and trade dress infringement action alleging that DeVore & Sons' Catholic Your Bible infringed on Saint Mary's Press' Catholic Youth Bible. Successfully defeated preliminary injunction motion and obtained dismissal of all claims with prejudice. See Saint Mary's Press of Minnesota v. DeVore & Sons, Inc., 2004 U.S. Dist. LEXIS 12255 (D. Minn. 2004).

Exxon Mobile Corporation v. Ecolab, Inc., Civil Action No. H-04-4236 (S.D. Tex. 2004): Defended trademark infringement, unfair competition, dilution and related claims alleging that Ecolab's EXXELRATE mark violates Exxon's rights in its EXXON mark and other "EXX" marks.

Kohler Co. v. Jacuzzi Inc. and Jacuzzi Brands Inc., Civil Action No. 03C 5377 (N.D. Ill. 2003): Trademark infringement dispute regarding Jacuzzi's use of Kohler's VINTAGE and COMFORT HEIGHT marks in connection with plumbing products.

TissueLink Medical, Inc. v. Waldemar GmbH, (Germany 2002): Managed defense of trademark infringement action and oppositions in Germany brought by Waldermar against TissueLink based on Waldemar's claims that TissueLink's TISSUELINK mark violated Waldemar's rights in the LINK mark.

For Your Ease Only, Inc. v. Image Matters, Inc., Civil Action No. 02C 0826 (N.D. Ill. 2002): Prosecuted trademark infringement, unfair competition and related claims arising out of Image Matters' use of the designation FILL-A-FRAME for decorative home furnishings in view of For Your Ease Only's rights in the marks FILL-A-BOWL, FILL-A-JAR, FILL-A-TRIVET, FILL-A-TRAY and FILL-A-FRAME marks.

Northern States Power Company v. PECO Energy Company, Civil Action No. 00-302 (PAM/JGL) (D. Minn. 2001): Defended trademark infringement, unfair competition and related claims against Northern States Power Company's new name and mark Xcel Energy asserted by PECO Energy Company based on its Exelon name and mark.

Audio Research Corporation v. RadioShack Corporation, No. 01-CV-1151 DWF/SRN (D. Minn. 2001): Prosecuted trademark infringement, unfair competition and breach of contract action relating to RadioShack's use of Audio Research's HIGH DEFINITION trademark.

McGuire Furniture Company, Inc. v. Market Trade Ltd., Civil Action No. 3-01-00507-FR (D. Or. 2001): Prosecuted trade dress, trademark infringement, unfair competition and design patent infringement action relating to furniture designs.

ADC Telecommunications, Inc. v. ADC Information Technologies, Inc., Civil Action NO. C-2--01-868 (S.D. Ohio 2001): Prosecuted trademark infringement, unfair competition and related claims relating to use of ADC mark.

U.S. Bancorp and U.S. Bank National Association v. Empire Bancshares, Inc. and United Southwest Bank, Civil Action No. 99-CV-985 MJD/JGL (D. Minn. 2000): Defended trademark infringement action brought by U.S. Bank contending that United Southwest Bank's US BANK mark infringes U.S. Bank's trademark rights.

Corbis Corporation v. Corbis Group LLC and Corbis Insurance Services, Inc., Case No. C99-2066R (W.D. Wa 2000): Prosecuted trademark infringement, unfair competition, and related claims for use of the name and mark CORBIS.

Gary W. Polzin d/b/a/ Polzin Glass v. Tom Polzin d/b/a Polzin Auto Glass, Appeal No. 99-2615 (8th Cir. May 18, 2000): Represented defendant in trademark infringement and unfair competition matter. Successfully defeated a motion for a preliminary injunction and obtained summary judgment for the defendant on the basis of claim preclusion. Affirmed on appeal.

The Valspar Corporation v. Sirius Products, Inc., Opposition No. 107,846 (TTAB Jan. 30, 1995): Successfully opposed registration of ZAP! on cleaning and restoring compounds based on prior rights in APZ for stain sealing primer paint.

Quoted

Amid Redskins Uproar, Trademark Challenge Still Uncertain, Law360 (October 2013)

China’s New Trademark Law A Boost To Brand Protection, Law360 (September 2013)

Minnetonka Moccasin’s suit against Target tip-toes away, Minneapolis StarTribune (January 2013)

Target accused of hometown knockoff, Minneapolis StarTribune (September 2012)

A Trademark Win in China, Twin Cities Business (April 2009) 

Protecting Voss Water, Minnesota Law & Politics (August/September 2008) 

Reviews Revisited: Court demands more substance from opinion-of-counsel defense in trademark disputes, Inside Counsel (May, 2008)

USPTO Makes Changes to Trademark Board Rules, IP Law360 (August 2, 2007)

Competing Retailers Dispute Wal-Mart Trademark Request, Wall Street Journal (November 7, 2006)

"Merchant & Gould Trademark Lawyers Excel at Marketing" Minneapolis/St. Paul Business Journal (September 8, 2006) (feature on the Merchant & Gould Trademark Group and their marketing techniques).


MEDIA CENTER

All Media
Press Releases
1/13/17
Merchant & Gould Team Takes First Place in 2016 Twin Cities 5K Corporate Team Challenge
A group of six Merchant & Gould professionals took home the first place prize for fastest team in the 2016 Medtronic Twin Cities Marathon 5K Corporate Team Challenge.In Minnesota, the Medtronic Twin Cities Marathon race series brings 25,000 runners and ...
News Alerts
1/6/17
TTAB Rules of Practice Are Changing Significantly
The USPTO Trademark Trial and Appeal Board (TTAB) has adopted new rules.  These rules significantly streamline the TTAB process, including allowing more material to be submitted through a notice of reliance and allowing testimony through declaration.  ...
Events
12/8/16
Lunch & Learn: Understanding the Scope and Impact of the TTAB Rule Changes
Please join us for a complimentary Lunch & Learn CLE covering recent rule changes at the Trademark Trial and Appeal Board.Thursday, December 8, 2016 12:00 - 1:30 p.m.The Minneapolis Club Governor's Room 729 2nd Avenue South  Minneapolis, MN ...
Events
9/22/16
Merchant & Gould Attorneys Present at Midwest IP Institute
Rachel Hughey, Scott Johnston, Andrew Lagatta, and Christopher Schulte, partners in the Minneapolis office of Merchant & Gould, will be featured presenters at the 2016 Midwest IP Institute offered by Minnesota CLE September 22 & 23, 2016 in downtown ...
Events
1/29/16
Protecting Snow Sports Innovations and Brands
Merchant & Gould attorneys will be presenting two sessions on protecting innovation and brands at the SnowSports Industries America (SIA) Snow Show on January 29 at the Colorado Convention Center.Held annually for 60 years, the SIA Snow Show is the largest ...
Events
9/24/15
Cyberworld CLE
CYBERWORLD: Protecting Your Brand in Cyberspace Join us for a complimentary CLE focusing on Trademark Law and the ever-evolving Cyberworld Will Schultz – Online Brand Protection and Watching, 2:00-2:30 Greg Golla – Domain Names, Advertising, ...
Events
9/17/15
Merchant & Gould Lawyers Speak at 2015 Midwest IP Institute
Two attorneys from Merchant and Gould's Minneapolis office will be seminar panelists at the 2015 Midwest Intellectual Property Institute taking place September 17 and 18 at the Minnesota CLE Conference Center in Minneapolis. The event is attracting renowned ...
Press Releases
8/17/15
Merchant & Gould Attorneys Included in The Best Lawyers in America© 2016
Merchant & Gould announces today that thirteen attorneys have been included in The Best Lawyers in America© 2016. Best Lawyers compiles lists of outstanding attorneys by conducting peer-review surveys in which lawyers confidentially evaluate their ...
Articles
1/15/13
Minnetonka Moccasin's suit against Target tip-toes away
Click here to read article including quote from Scott Johnston.
Press Releases
1/11/13
Merchant & Gould Attorneys Andrew S. Ehard and Scott W. Johnston Named to World Trademark Review's WTR 1000
Intellectual property law firm Merchant & Gould today announced that two attorneys from its trademark practice were named to World Trademark Review’s WTR 1000, the first and only stand-alone ranking publication to focus exclusively on trademark practices ...
Press Releases
10/1/12
Twelve Merchant & Gould Attorneys Named 2013 Best Lawyers in America
Merchant & Gould, an intellectual property law firm, today announced that 12 of the firm’s attorneys are named by their peers in The Best Lawyers in America 2013® (Copyright 2012 by Woodward/White, Inc., of Aiken, SC). Merchant & Gould ...
News Alerts
4/16/12
Merchant & Gould Trademark Enforcement Team Alert: Fourth Circuit Revives Rosetta Stone’s Trademark Infringement and Dilution Claims Against Google
Brand owners and Internet advertisers take note: This notice provides an overview of the Rosetta Stone v. Google decision that revives Rosetta Stone’s claim of trademark infringement and dilution against Google based on the use of trademarked ...
Articles
3/30/12
B-dubs wins on color, not name in suit
Click here to read article including comments by Scott Johnston
Press Releases
8/22/11
16 Merchant & Gould Attorneys Named 2011 Super Lawyers
Firm Also Recognizes Nine Rising Stars Merchant & Gould, an intellectual property law firm, today announced that 16 of the firm's attorneys are named Super Lawyers in 2011. The attorneys are recognized for excellence in intellectual property law and ...
Press Releases
8/10/10
Eight Merchant & Gould Attorneys Named 2011 Best Lawyers in America®
Merchant & Gould, an intellectual property law firm, today announced that eight of the firm's attorneys are named by their peers in The Best Lawyers in America 2011®. The attorneys, who represent three regional offices, are recognized for intellectual ...
Press Releases
7/26/10
26 Merchant & Gould Attorneys Named 2010 Super Lawyers
Merchant & Gould, an intellectual property law firm, today announced that 26 of the firm's attorneys are named Super Lawyers in 2010. The attorneys are recognized for excellence in intellectual property law and IP litigation. Each year, no more than ...
White Papers
5/1/07
United States Court Of Appeals For the Federal Circuit Holds Lawyers.com Generic: Much Ado About Nothing?
On April 12, 2007, the United States Court of Appeals for the Federal Circuit rendered a decision in In re Reed Elsevier Properties Inc., affirming the Trademark Trial and Appeal Board’s (“Board”) finding that the mark LAWYERS.COM is ...