John W. Scruton

John Scruton is Counsel to the firm and based in its Louisville office. He has practiced intellectual property law for over 10 years and litigation for over 20 years. John's practice includes all phases of the trademark registration process, including a particular focus on proceedings before the Trademark Trial and Appeal Board such as oppositions to pending trademark applications and actions to cancel existing registrations. He is also active in litigating trademark, copyright, patent, unfair competition and trade secret cases; negotiating and drafting licenses, assignments and other transactions involving trademark and copyrights; and, counseling clients concerning intellectual property strategies.

Recent News, Articles & Speaking Engagements

Spring Cleaning for Your Intellectual Property

Stites & Harbison Thirsty Thursday Networking event, March 5, 2020

The Trouble with THE

Trademarkology blog, September 5, 2019

Ethical Issues in IP Matters: The Trademark Company, Matt Swyers, and the Office of Enrollment and Discipline

American Bar Association Section of Intellectual Property Law, June 20, 2017

Mr. Met Regrets His Error, But Will Survive

Trademarkology blog, June 2, 2017

Supreme Court makes it harder to overturn patent cases on appeal

Supreme Court rules deceptive labeling claim may proceed

Raging Bull and Unintended Consequences of the CTEA?

Recent Developments in Intellectual Property Law—Trademark Law Update

Louisville Bar Association, June 2008

Recent Developments in Intellectual Property Law—Trademark Law Update

Louisville Bar Association, June 2006

Supreme Court decides eBay Inc. v. MercExchange

Basics of Trademark Licensing

Louisville Bar Association, April 2006

Regulation of False Advertising by the Federal Trade Commission

Louisville Bar Association, September 2004
Recent Assignments
Bar Admissions
U.S. District Court for the Central District of California
U.S. District Court for the District of Colorado
U.S. District Court for the Eastern District of Kentucky
U.S. District Court for the Northern District of California
U.S. District Court for the Western District of Kentucky
U.S. Supreme Court
Kentucky Bar Association
Louisville Bar Association, Intellectual Property Section, Chair (1998), Vice Chair (1997)
State Bar of California
Community Involvement

The Fabulous Leopard Percussionists, Inc., Board Member

Teach Kentucky, Board Member

Yale in Kentucky, Board Member

Highland Youth Recreation, Steering Committee

First Unitarian Church of Louisville, Member

More Than Stites & Harbison

From 1986 to 1995, Mr. Scruton was an associate in the Los Angeles office of Sidley & Austin, an international law firm based in Chicago. He was a member of the firm's litigation group and worked on a wide variety of matters, including a series of condominium construction defect/land subsidence cases, partnership disputes, environmental and toxic tort matters, Drexel Burnham Lambert litigation, and a series of cases involving the Americans with Disabilities Act.

John is a member of the board of The Fabulous Leopard Percussionists, Inc. (a non-profit children's music group), Teach Kentucky (a charitable organization that recruits new teachers) and Yale in Kentucky (the local alumni association). He is on the Steering Committee for Highland Youth Recreation, a non-profit recreational sports league operated by Highlands Community Ministries. He is also active in leadership positions at First Unitarian Church of Louisville.

John plays tradtional music on the guitar and banjo, and enjoys photography.

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Client Alerts

Supreme Court Rules Proof of Willfulness Not a Precondition to Profits in Trademark Infringement Actions

On April 23, 2020, the United States Supreme Court resolved a circuit split and held that plaintiffs in Lanham Act trademark infringement cases do not need to show the defendant infringed willfully in order to recover the defendant’s profits.

by John W. Scruton and Mari-Elise Paul April 29, 2020

Spring Cleaning for Your Intellectual Property

Date: 4/30/20
Time: 12:00 p.m. - 1:00 p.m.


Attorneys John Scruton and Nick Stewart will discuss suggestions on how to make your business's IP portfolio even better in 2020.

John W. Scruton and Gary N. Stewart (Nick) April 27, 2020

The Trouble with THE

You may have heard by now that a certain Midwestern university that gets a lot of attention in this blog has filed an application to register the word THE as a trademark.

by John W. Scruton September 05, 2019

The College Admissions Scandal Crosses into Trademark Territory

By now you are no doubt familiar with the current college admissions scandal. After a few weeks of celebrities and other wealthy folks being embarrassed, being criminally charged, and pleading to those charges, a trademark issue finally surfaced in the popular press.

by John W. Scruton May 06, 2019

Chuck Taylor Shows a Big Benefit of Registration

The iconic Chuck Taylor sneaker was involved in a recent case that has the attention of trademark watchers. The bone of contention was the familiar look of the Chuck Taylor sneaker worn by generations of American kids (and adults), and whether shoes imported by Skechers and others were infringing.

by John W. Scruton January 08, 2019

Does Ohio State Own the O?

We recently looked at the idea of state universities claiming a (limited) monopoly on the right to use the name of their state on clothing and other items. At first blush it seems surprising that anyone can have the exclusive right to a state name, but trademark law allows it in the right circumstances, and with limitations.

by John W. Scruton October 10, 2018

Watch Out for Trademark Registration Scams

One of the facts of modern life is that you will be the target of scams. Sometimes it's the son of the former defense minister of Nigeria. Sometimes it's someone trying to trick you into paying them money to do something with your trademark.

by John W. Scruton September 21, 2018

Registration of State Names as Trademarks

Collegiate licensing is a big deal these days. Lots of alumni and fans of college teams want to wear clothing bearing the marks of their alma mater or their favorite team.

by John W. Scruton August 21, 2018

The Trademarks of the World Cup Stars

In honor of the world's biggest sporting event, now occurring in Russia, let's look at which of the big stars of the World Cup is winning the trademark competition. The competition, as I define it, is to show evidence of protecting the mark that is the player's name or image.

by John W. Scruton July 10, 2018

Things Were Breaking Fast for the Serial Podcast Last Week

The groundbreaking Serial podcast was involved in two very different legal developments last week. The one that made the news involved its protagonist, Adnan Syed. The other, which you could be excused for having missed...
by John W. Scruton April 06, 2018

Things Are Getting Crowded in the World of Beer Trademarks

There has been a lot of talk lately about the idea that the supply of trademarks is running short. A recent article in the Harvard Law Review supported that idea: after some "big data" analysis...
by John W. Scruton March 08, 2018

A PR Headache for the CROCK-POT Trademark

Fans of the tear-jerking NBC drama This Is Us will be aware of a certain incident with a kitchen appliance that had a big effect on the show's Pearson family. (Fans who don't know what...
by John W. Scruton February 05, 2018

Hurray! The Path Is Now Clear for the Registration of Vulgar Trademarks!

Many Trademarkology readers will recall that the Supreme Court in June 2017 held that the Patent and Trademark Office could not legally refuse registration of a mark on the ground that it was disparaging. As...
by John W. Scruton January 05, 2018

Velcro Gets Creative in Protecting Its Brand from Generic Use

On August 28, I posted about a case involving the question whether "google" is a generic term for providing a search engine.Now the good folks at Velcro Companies are fighting the same battle, but they're...
by John W. Scruton September 28, 2017

Is "Google" generic? If only there were a way to search for the answer on the internet!

You know you've been successful when the name of your product is so prominent that the public uses it to refer to that whole class of product. When that happens, there's good news and bad...
by John W. Scruton August 28, 2017

Coach + Kate Spade = Quirky, Preppy, Playfully Sophisticated Grippables

Coach, the maker of luxury handbags and various other grippable accessories, announced that it will buy Kate Spade, a competitor in the luxury handbag arena. Both companies also sell clothing and other products, but they...
by John W. Scruton June 19, 2017

Mr. Met Regrets His Error, But Will Survive

It's an old story: the company has associated itself with a particular celebrity in advertisements and other promotions, and now things have gone off the rails for that celebrity. Suddenly, Hertz's long use of OJ...
by John W. Scruton June 02, 2017

Red Bull’s Opposition Might Not Have Wings

It looks like Red Bull GmbH, the maker of the Red Bull energy drink, may have decided to throw its hat into the (bull) ring as a trademark bully.You are likely aware of Red Bull's...
by John W. Scruton February 23, 2015

Katy and Left Shark: Pop Divas Flex IP Muscles

If you watched the Super Bowl halftime show, then you know about Katy Perry and the dancing sharks (and dancing beach balls, and dancing palm trees). If you didn't watch it, you should hasten to...
by John W. Scruton February 17, 2015

Is Taylor Swift Trying to Use Trademark Protection to Monopolize Common Phrases?

You may have heard already that Mistress of All She Surveys Taylor Swift has filed several applications to register trademarks drawn from lyrics to songs in her boffo album 1989. Among the marks are "This...
by John W. Scruton February 06, 2015

Trademarkology: Mister Softee Comes Down Hard on Imposters

Ice cream lovers can rest a little easier, now that Mister Softee has shut down an unscrupulous quartet of competitors.The Mister Softee company sells ice cream from trucks that play a jingle to announce their...
by John W. Scruton January 30, 2015

Anchor Weighs Anchor and Drifts Off to Where the Good Bars Go.

News came earlier this month that one of the beloved trademarks at my alma mater is suddenly out of use. That is the result of the closing of the Anchor Bar (or Anchor "Restaurant," as...
by John W. Scruton January 23, 2015
Client Alerts

Supreme Court makes it harder to overturn patent cases on appeal

The Supreme Court has clarified how an appellate court should review the trial court’s determination of what patent claims mean. In some cases, this decision will make it more difficult for a party that loses...
by John W. Scruton January 21, 2015

Yosemite Trademarks Owned by . . . Delaware North?

Yosemite is one of the crown jewels of our National Park system. That's mostly because of its natural beauty â Half Dome, El Capitan, Bridalveil Fall, and countless other features. But, like most of our...
by John W. Scruton January 16, 2015

Rebuilding a Brand: PALM to Rise Again?

Move over, iPhone and step aside, Blackberry. It looks like we are about to see the revival of the PALM brand for a wireless device. If you go to the website, you'll see this...
by John W. Scruton January 09, 2015

Guest Blog Post! ISIS and Knowing When to Fold ‘Em

It's not easy choosing a name for your new product. You brainstorm, collect possibilities, consider the pros and cons, sweat it out, and finally pick a mark. Then you open the paper and find that...
by John W. Scruton July 11, 2014
Client Alerts

Supreme Court rules deceptive labeling claim may proceed

The Supreme Court today resolved a dispute about misleading product labeling. The issue was whether a private party can sue a competitor on the grounds that the competitor’s beverage was misleadingly labeled, even though...
by Amy Sullivan Cahill and John W. Scruton June 12, 2014
Client Alerts

Raging Bull and Unintended Consequences of the CTEA?

The U.S. Supreme Court today handed down its decision holding that the Copyright Act’s statute of limitation barring actions not brought within three years of infringing conduct may end the analysis of whether claims...
by Amy Sullivan Cahill and John W. Scruton May 19, 2014
Client Alerts

Supreme Court decides eBay Inc. v. MercExchange

The U.S. Supreme Court issued its decision in eBay Inc. v. MercExchange, L.L.C. on May 15, 2006. The case clarifies when an injunction against patent infringement may be issued. The result is that there...
by John W. Scruton May 15, 2006