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Scott M. Sisun Esq. - New York, NY

135 Madison AvenueFloor 5 New York, NY 10016

Super Lawyers®

1

Updated: 08/07/2024

New York Trademark Lawyer

Overview

Sisun Law, PLLC is a full-service intellectual property law firm founded by Scott Sisun, a former Trademark Examining Attorney with the U.S. Patent and Trademark Office (USPTO). Scott is featured in World Trademark ReviewTM as "one to watch" and Super LawyersTM. He is currently the founder of Sisun Law, an intellectual property law firm that offers trademark, copyright, and patent law services to clients of all sizes.

Among his many accolades, Mr. Sisun is featured in the "prosecution and strategy" category of the World Trademark Review 1000 ("WTR 1000"). The WTR 1000, a peer-nominated publication, notes that Mr. Sisun has an "intuitive sense of timing when it comes to the application of aggressive tactics." Scott is also a Super Lawyer, the top 5% of all lawyers in the US. Mr. Sisun was nominated to Super Lawyers for his intellectual property experience. Scott is also an adjunct professor of trademark law at New York Law School in New York City where he teaches the next generation of lawyers an insiders view of the USPTO's trademark system.

Over the course of his almost twenty-year career, Mr. Sisun has prosecuted thousands of trademark applications for clients in various fields including fashion, technology, finance, food and spirits, and sports and entertainment. He has conducted full trademark clearance searches for an equal number of trademarks for clients to help determine distinctiveness of the mark and potential trademark conflicts. He has also significant experience in the negotiating and drafting of intellectual property agreements for his clients, including settlement, coexistence, and license agrements, to name a few. As an advocate for his clients, Mr. Sisun has brought and defended many complex trademark matters before the Trademark Trial and Appeal Board and has represented clients in connection with domain name enforcement and defense UDRP actions. He is experienced with copyright and trademark enforcement having successfully resolved numerous enforcement and defense matters with third-party retail and social media platforms as well as individuals and companies. He is also an accomplished speaker having led and moderated many intellectual property roundtables, and numerous practical trademark law talks for business owners. His legal writing includes co-authoring the Practical Law publication Loss of Trademark Rights, and the drafting of numerous published articles on topics from a number of sectors including cannabis, sports, and fashion.

Scott also mentors startups of all stages for the DC-based accelerator, C5 Accelerate, where he teaches a quarterly seminar to the accelerator's cohorts on trademark law. He has also been an active New York City Bar and International Trademark Association ("INTA") member and committee member for various intellectual property-related committees including the Fashion Law Committee, the Trademark & Unfair Competition Committee, the Internet Committee, and the enforcement committee with INTA.

Mr. Sisun graduated from Benjamin N. Cardozo School of Law at Yeshiva University having served on the Moot Court Honor Society while in law school and holds a Master of Laws (LLM) degree in Intellectual Property from the same institution.

Following law school, Mr. Sisun gained his initial legal experience as a judicial law clerk for Judge John A. O'Shaughnessy (retired) in New Jersey. Prior to founding SISUN LAW, Scott practiced with large New York City law firms and served as a Trademark Examining Attorney with the USPTO.

Scott also surfs and trains for various road races with friends and clubs, including three New York City Marathons.

About Scott M. Sisun Esq.

Practice Areas

  • Trademark
  • Copyright
  • Patent
  • Intellectual Property

Qualifications

Bar Admissions

  • New York, 2002

Other Affiliations

  • New York, 2002
  • USPTO Trademark Examiner alumni
  • International Trademark Association (Member, Trademark Office Practices Committee, USPTO subcommittee)
  • The Association of the Bar of the City of New York (Member, Trademark & Unfair Competition Committee)
  • Trademark and Unfair Competition and Fashion Law Committees of the New York City Bar
  • Enforcement Sub Committee of the International Trademark Association (INTA)

Education

  • Yeshiva University Benjamin N. Cardozo School of Law, New York, New York, 2003
    LL.M.
    Major: Intellectual Property
  • Yeshiva University Benjamin N. Cardozo School of Law, New York, New York, 2001
    J.D.
    Honors: Moot Court Honor Society
  • University of Massachusetts at Amherst, Amherst, Massachusetts, 1997
    B.A.

Past Positions

  • United States Patent and Trademark Office, Trademark Examining Attorney
  • Judge John A. O’Shaughnessy, Law Clerk
  • Carter Ledyard & Milburn LLP
  • Kelley Drye & Warren, LLP

Pro Bono Activities

  • Mentor with C5 Accelerate, quarterly seminars on trademark law for start-ups

Classes and Seminars

  • “Brand Essentials: Choosing, Protecting and Understanding Trademarks and Domain Names,”, New York City Bar Association, - October 13, 2010

Achievements

Other Sources of Feedback About Scott M. Sisun

Included on the 2024 New York Metro Super Lawyers list


Past Lists

  • 2023 New York Metro Super Lawyers list
  • 2022 New York Metro Super Lawyers list
  • 2021 New York Metro Super Lawyers list
  • 2020 New York Metro Super Lawyers list

View the profile for Scott M. Sisun on Super Lawyers

Honors

  • World Trademark Review 1000 list of Leading Trademark Professionals, “prosecution and strategy,” 2016 to Present
  • Moot Court Honor Society, Yeshiva University Benjamin N. Cardozo School of Law

Photo

Office Information

Address

135 Madison AvenueFloor 5 New York, NY 10016

Publication

Articles

  • Co-author, Loss of Trademark Rights a Practice Note, Practical Law
  • Entertainment and Sports Lawyer, an ABA publication, “Revisiting Federal and State Trademark Registration for the Cannabis Industry,” 2018
  • Entertainment and Sports Lawyer, an ABA publication, “The Ball Is in Your Court: An Update on Trademarks (and Copyright) in Sports,” 2017

Representative Cases

  • Conducted thousands of trademark full searches to determine trademark distinctiveness and potential trademark conflicts
  • Overcame numerous United States Patent and Trademark Office trademark application refusals
  • Advised on numerous trademark and brand protection strategies
  • Managed various worldwide trademark and copyright portfolio, filing, and enforcement programs
  • Handled numerous T.T.A.B. trademark trial and appeal board trademark matters
  • Drafted and defended trademark cease and desist letters
  • Prepared Brand Guidelines for various licensing clients
  • Filed numerous copyright applications
  • Enforced and defended various copyright matters
  • Successfully advised IP clients in pre-acquisition stages
  • Created and implemented IP due diligence strategies for pre-IPO clients
  • Successfully brought and defended numerous UDRP domain name enforcement matters
  • Assisted clients with Amazon Brand Registry trademark protocols
  • Represented CBD and cannabis clients in various IP matters
  • Advised various professional athletes and celebrities on trademark and copyright protection strategies

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