Counsel

John W. Scruton

John Scruton is Counsel to the firm and based in its Louisville office. He has practiced intellectual property law for over 25 years. John's practice includes all phases of the trademark registration process, including clearing marks, prosecuting applications, and 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
California
Kentucky
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
Memberships
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

Yale in Kentucky, Board Member

First Unitarian Church of Louisville, Member

Education
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.

See more related to John W. Scruton
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
Events

Spring Cleaning for Your Intellectual Property

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

WEBINAR

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
Trademarkology

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
Trademarkology

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
Trademarkology

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
Trademarkology

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
Trademarkology

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
Trademarkology

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