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Scott Gerien heads the firm’s Intellectual Property Department and has been practicing in the areas of trademark, copyright and unfair competition law since his first case in 1996. His experience covers all aspects of these areas of law, including practice before the U.S. Patent and Trademark Office (USPTO), counseling on protection, licensing and acquisition of intellectual property, and enforcement and litigation in state and federal court. He has represented clients in over 250 administrative proceedings in the USPTO and has filed and prosecuted in excess of 1,500 trademark applications.
Scott manages both the domestic and international trademark portfolios of several high profile companies, and also acts as the U.S. trademark associate for numerous foreign entities. In 2006, 2007 and 2009 Scott was identified as one of the top fifty trademark filers in the United States based on total number of trademark applications filed with the U.S. Patent and Trademark Office. In 2009, Wine Industry Business Journal also named him one of the top wine lawyers in Northern California and described him as “one of the most knowledgeable wine trademark-protection attorneys in the nation and the world.”
Prior to joining the firm, Scott was an attorney with a San Francisco intellectual property boutique law firm. Scott is very active with the International Trademark Association (INTA) and is the current Chairman of the INTA Related Rights Committee, which focuses on geographical indications, design rights, rights of publicity and indigenous rights. He is also a board member of the International Wine Lawyers Association. Scott has been invited to speak on trademark issues by several different international organizations and has also written numerous articles on intellectual property issues.
Scott graduated Phi Beta Kappa from Trinity College in Hartford, Connecticut in 1990 with a degree in Political Science. After college, Scott worked in advertising as an account executive before attending Boalt Hall School of Law at the University of California, Berkeley, where he was the recipient of the American Jurisprudence Award in Remedies, a member of the Moot Court Board, and a member of the Berkeley Journal of Employment and Labor Law. Outside of his law practice, Scott is also a Board member of di Rosa Art. www.diRosaArt.org
Representative Matters
- In coordination with Indian counsel, represented U.S. wine trade association in acquiring first registration of U.S. geographical indication issued by IP India
- Successfully defended small, family-owned Napa Valley winery in trademark infringement proceeding initiated by producer of highest-volume Italian wine in the U.S., including successfully having matter transferred to the Northern District of California from the Southern District of New York
- Successfully opposed application for trademark for Tequila before U.S. Patent and Trademark Office Trademark Trial and Appeal Board on basis of confusing similarity with trademark for wine
- Obtained dismissal of trademark declaratory judgment action brought by Chilean winery against boutique Napa Valley winery in Southern District of New York
- Handles U.S. trademark portfolio for one of the top ten most recognizable foreign wine brands
- Manages worldwide trademark portfolio spanning over sixty countries for two of the ten largest wine companies in the United States
- In coordination with European counsel, represented U.S. wine trade association in acquiring first registration of non-European geographical indication for wine issued by the European Commission; manages worldwide policing and protection for such geographical indication.
- Obtained preliminary injunction in U.S. District Court for the Northern District of California for Napa Valley winery enjoining Australian winery from using infringing trademark in U.S.
- Obtained summary judgment in trademark cancellation proceeding before U.S. Patent and Trademark Office Trademark Trial and Appeal Board on basis of fraudulent registration of mark
- Successfully defended Australian winery in trademark infringement action brought by a U.S. importer in U.S. District Court for the Eastern District of New York.
- Defended Chinese home goods manufacturer in trade secrets action brought by California product developer in U.S. District Court for the Northern District of California, defeating motion for preliminary injunction and favorably resolving matter for client.
- Conducted intellectual property due diligence and drafted intellectual property acquisition documents in acquisition of assets of Australian winery by Napa Valley winery
- Successfully defended natural foods company in trade dress infringement action brought by competitor in U.S. District Court for the Northern District of California, defeating motion for preliminary injunction and resolving case in client’s favor.
- Obtained preliminary injunction for Sonoma County winery in trademark infringement action against Sierra foothills winery in U.S. District Court for the Northern District of California preventing use of infringing trademark.
- Successfully defended board sports clothing manufacturer against preliminary injunction for trademark infringement brought by museum for wine and arts, resolved case by selling client’s mark to plaintiff for considerable profit.
- Obtained assignment orders for three separate domain names in proceedings before National Arbitration Forum pursuant to Uniform Domain-Name Dispute-Resolution Policy (UDRP) for web-based software producer against various cyber squatters.
- Represented Hall of Fame baseball player in acquiring domain name reflecting his personal name in UDRP proceeding against cyber squatter before the World Intellectual Property Organization.
Publications
- The Vineyard Designation: Branding & Trademark Issues for Wineries & Vineyard Owners
- International Trademark Treachery in the Internet Age
- A Multilateral Register for Geographical Indications for Wines and Spirits: A Summary and Assessment of the Competing Proposals
- Avoiding Branding's Cardinal Sins
- Geographical Branding
- Protecting Your Design: Message is the bottle
- “Wine Brands and Appellations of Origin,” Wine Law in America
- Protectable Trademarks for Packaging
News
- Scott Gerien selected by Wine Industry Business Journal for its first “Who’s Who in Wine Law,” called “one of the most knowledgeable wine trademark-protection attorneys in the nation and the world.”
- Four DP&F Attorneys Scheduled to Present at Napa Winery Conference
- Scott Gerien to participate as faculty member for ABA CLE on Food and Beverage Marketing
- California Bar IP Section - International Committee, Geographical Indications Presentation, by J. Scott Gerien
Speeches
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“U.S. Supply Agreements and Issues of Parallel Importation,” invited presentation to International Wine Law Association, Logroño, Spain, October 2011
"International Trademark Protection for Wine Brands," invited presentation Legal and Tax Issues Facing the Wine Industry, CLE, Napa, California, July 2011
"Geographical Indications," invited presentation to the California Bar Association, Intellectual Property Section, International Committee, Napa, California, March 2011
"U.S. Treatment of Geographical Indications," invited presentation to the European Community Trademark Association, Barcelona, Spain, June 2010
"Label Issues and Intellectual Property," invited presentation to the Napa Valley Vintners Association, Yountville, California, April 2010
“Bottles, Labels and More: Intellectual Property Rights in the Alcohol Beverage Industry,” invited presentation to International Wine Law Association, Trier, Germany, October 2009
“Appellations of Origin and Geographic Brands,” guest speaker, Boalt Hall School of Law, Wine Law, Berkeley, California, October 2009
“Intellectual Property Issues in the Wine Industry,” invited presentation, Wine Law in America, CLE, Sonoma, California, July 2009
“I Now Pronounce You …Plaintiff and Defendant: Weddings and Intellectual Property,” invited presentation Wedding Industry Professionals Association, Napa, California, 2009
"Geographical Terms as Intellectual Property" and “Case Study: The Geographical Indications of Napa Valley and Champagne,” guest speaker, Boalt Hall School of Law, Protecting Products of Place, Berkeley, California, 2009
"Names, Labels and Trademarks," invited presentation, Best Practices for Owning and Operating a Winery, CLE, San Francisco, California, 2007 & Napa, California, 2008 and 2009
"Distinctive Signs for Collective Use – Agricultural Products," invited panel moderator, International Forum on Distinctive Signs for Collective Use, World Intellectual Property Organization, Versailles, France, 2008
“A Discussion of Wine Trademarks and Appellations,” invited presentation The Sacramento Seminar, Sonoma, California, 2008
"Branding and Wine Law," invited presentation Assn. of Cal. Water Agencies CLE, Napa, California, 2008
"Geographical Terms as Intellectual Property," invited presentation at National CLE Conference, Aspen, Colorado, 2007
"Appellations of Origin: International Developments & Impact in Canada," invited presentation to Bacchus at Brock, Niagara, Canada, 2007
"Consumer Protection Debate – the Wine Trade Needs to Develop Better Consumer Protection Standards," invited presentation to International Wine Law Association, Martigny, Switzerland, 2007
"Cold Case File: Message on a Bottle," invited presentation Vintners Quality Alliance Ontario, Niagara, Canada, 2006
"Decanting Wine Law," invited presentation Boalt Hall Alumni Reunion, Berkeley, California, 2006
"Intellectual Property Issues in the Wine Industry," guest speaker, Boalt Hall School of Law, Wine Law, Berkeley, California, 2005 – 2007
"Intellectual Property Issues in International Distribution of Wines," invited presentation to International Wine Law Association, Mornington Peninsula, Australia, 2005
"Application of Article 23.2 of GATT TRIPS Under U.S. Trademark Law," invited presentation International Trademark Association, Atlanta, Georgia, 2004
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