J. Scott Gerien

Partner

  • Biography

    Scott heads DP&F’s Intellectual Property Department. He 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 500 administrative proceedings in the USPTO and has filed and prosecuted in excess of 3,300 trademark applications.

    Scott manages both the domestic and international trademark portfolios of several high profile companies, and also acts as the U.S. trademark counsel for numerous foreign entities. Scott was recognized in 2017 by World Trademark Review for the fifth year in a row in the WTR 1000 as one of the world’s leading trademark professionals for trademark prosecution and strategy which noted: “Dickenson Peatman & Fogarty’s Napa office is home to Scott Gerien, ‘an excellent trademark practitioner, particularly when it comes to disputes in the alcoholic beverage industry.’” Scott was also identified as one of the top fifty trademark filers in the United States for several years by Trademark Insider. 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.”

    Scott is very active with the International Trademark Association (INTA) and currently serves as a member of the Famous and Well-Known Marks Committee and has previously served as Chairman of the Geographical Indications Committee.  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.

  • Education
    • J.D., University of California at Berkeley, Boalt Hall School of Law (1996)
    • B.A., Trinity College, Hartford, Connecticut (1990)
  • Writings
    • “Wine Brands and Appellations of Origin”, Wine Law in America
      May 2011
    • “Protecting Your Design: Message is the bottle”
      July/August 2009 – Download Article
    • “Protectable Trademarks for Packaging”
      May/June 2009 – Download Article
    • “International Trademark Treachery in the Internet Age”
      August 11, 2008 – Download Article
    • “Geographical Branding”
      May/June 2007 
    • “A Multilateral Register for Geographical Indications for Wines and Spirits: A Summary and Assessment of the Competing Proposals”
      2007 – Download Article
    • “Avoiding Branding’s Cardinal Sins”
      November/December 2006 – Download Article
    • “The Vineyard Designation: Branding & Trademark Issues for Wineries & Vineyard Owners”
      April 2003
  • Presentations
    • Invited speaker, “U.S. Supply Agreements and Issues of Parallel Importation,” International Wine Law Association, Logroño, Spain
      October 2011
    • Invited speaker, “International Trademark Protection for Wine Brands,” Legal and Tax Issues Facing the Wine Industry, CLE, Napa, California
      July 2011
    • Invited speaker, “Geographical Indications,” California Bar Association, Intellectual Property Section, International Committee, Napa, California
      March 2011
    • Invited speaker, “U.S. Treatment of Geographical Indications,” European Community Trademark Association, Barcelona, Spain
      June 2010
    • Invited speaker, “Label Issues and Intellectual Property,” Napa Valley Vintners Association, Yountville, California
      April 2010
    • Invited speaker, “Bottles, Labels and More: Intellectual Property Rights in the Alcohol Beverage Industry,” International Wine Law Association, Trier, Germany
      October 2009
    • Guest speaker, “Appellations of Origin and Geographic Brands,” Boalt Hall School of Law, Wine Law, Berkeley, California
      October 2009
    • Invited speaker, “Intellectual Property Issues in the Wine Industry,” Wine Law in America, CLE, Sonoma, California
      July 2009
    • Invited speaker, “I Now Pronounce You …Plaintiff and Defendant: Weddings and Intellectual Property,”Wedding Industry Professionals Association, Napa, California
      2009
    • Guest speaker, “Geographical Terms as Intellectual Property” and “Case Study: The Geographical Indications of Napa Valley and Champagne,” Boalt Hall School of Law, Protecting Products of Place, Berkeley, California
      2009
    • Invited speaker, “Names, Labels and Trademarks,” Best Practices for Owning and Operating a Winery, CLE
      San Francisco, California, 2007
      Napa, California, 2008 and 2009
    • Invited panel moderator, “Distinctive Signs for Collective Use – Agricultural Products,” International Forum on Distinctive Signs for Collective Use, World Intellectual Property Organization, Versailles, France
      2008
    • Invited speaker, “A Discussion of Wine Trademarks and Appellations,” The Sacramento Seminar, Sonoma, California
      2008
    • Invited speaker, “Branding and Wine Law,” Assn. of Cal. Water Agencies CLE, Napa, California
      2008
    • Invited speaker, “Geographical Terms as Intellectual Property,” National CLE Conference, Aspen, Colorado
      2007
    • Invited speaker, “Appellations of Origin: International Developments & Impact in Canada,” Bacchus at Brock, Niagara, Canada
      2007
    • Invited speaker, “Consumer Protection Debate – the Wine Trade Needs to Develop Better Consumer Protection Standards,” International Wine Law Association, Martigny, Switzerland
      2007
    • Invited speaker, “Cold Case File: Message on a Bottle,” Vintners Quality Alliance Ontario, Niagara, Canada
      2006
    • Invited speaker, “Decanting Wine Law,” Boalt Hall Alumni Reunion, Berkeley, California
      2006
    • Guest speaker, “Intellectual Property Issues in the Wine Industry,” Boalt Hall School of Law, Wine Law, Berkeley, California
      2005 – 2007
    • Invited speaker, “Intellectual Property Issues in International Distribution of Wines,” International Wine Law Association, Mornington Peninsula, Australia
      2005
    • Invited speaker, “Application of Article 23.2 of GATT TRIPS Under U.S. Trademark Law,” International Trademark Association, Atlanta, Georgia
      2004
  • Recognition