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Scott W. Johnston

Partner

SJohnston@MerchantGould.com
D 612.371.5274

Assistant

Sandra Lindemeier

SLindemeier@MerchantGould.com
D 612.371.5252
Scott W. Johnston photo

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.

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...

Tuneful or Tone Deaf?: Three lessons in brand enforcement and management gleaned from the headlines., Speaker, Tennessee Chapter of the Association of Corporate Counsel, October 14, 2020

Trademark Enforcement Without Alienating Your Customers or Tarnishing Your Brand, CLE, February 27, 2020

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)

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).