Scott Lonardo

Partner at Pranger Law PC
Ranked in United States: California
WTR Research

The WTR 1000 focuses exclusively on trademark practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal trademark expertise

Bronze - Individuals: enforcement and litigation

Brand owners that engage Pranger Law have at their disposal hands-on, senior-level and exceptionally well-trained attorneys; the popular boutique has as many partners (four) as it does other fee earners, and is modelled to give a high-quality, agile and cost-effective service. Judging from superlative client feedback, it is delivering resoundingly on all fronts: “Pranger Law is one of the finest boutiques in the United States and has great lawyers who handle all trademark needs efficiently.” Some of the warmest praise is reserved for founding partner Holly Pranger, a “world-class” lawyer who “navigates the most difficult challenges with incredible confidence and skill”. “She stays focused on business goals and budget concerns and offers unmatched value for money.” Also singled out, Gail Nevius Abbas has “tons of worldwide prosecution experience” and manages complex projects with ease. For Solera Holdings, which owns over 1,000 records in 100 or so countries, she recently completed an EU-to-national applications conversion effort in 27 jurisdictions, working collaboratively with foreign associates to get the job done. For a staunch ally in fraught litigation, look no further than Scott Lonardo.

Scott Lonardo's Profile

Scott Lonardo is an IP litigator and counsellor with a focus on trademark and trade dress litigation and disputes. Mr Lonardo has experience practising in federal district and appellate courts, in registration disputes before the Trademark Trial and Appeal Board and in domain name disputes before the World Intellectual Property Organisation (WIPO). He also handles copyright, patent, trade secret, defamation and breach of fiduciary duty cases.

Mr Lonardo assists clients with strategies to protect and enforce their rights through pre-litigation activities, as well as in navigating responses to cease and desist letters. His enforcement experience ranges from large-scale brand monitoring and enforcement for top-tier companies to one-time disputes for start-ups.

Mr Lonardo has represented companies in a variety of different fields, including social media, software, electronic design, apparel, food and beverages, consumer goods, automotive, medical device and healthcare companies. Mr Lonardo’s notable victories include a favourable judgment at trial in a case involving a single colour mark for a medical device, as well as preparing the first-ever successful Legal Rights Objections to a generic top-level domain registration before WIPO, which was upheld in later court challenges.

Before joining Pranger Law, Mr Lonardo practised at a leading global law firm in Silicon Valley and a boutique IP firm in Chicago, Illinois. In addition to his law firm experience, Mr Lonardo clerked for the Honourable Kathleen M O’Malley both at the US Court of Appeals for the Federal Circuit and at the US District Court for the Northern District of Ohio.

Mr Lonardo received a BA in government from Georgetown University and a JD from the Georgetown University Law Centre in Washington DC.

Firm Profile

Pranger Law PC is a premier boutique, full-service IP and advertising law firm. Established in 2004 initially as a trademark practice, Pranger Law has the registration and protection of brands in its DNA and trademark prosecution remains the strongest draw for new clients. With offices in San Francisco and Silicon Valley, Pranger Law provides all aspects of global trademark services to well-known and famous brand owners, the hottest emerging growth companies and famous artists.

Pranger Law handles trademark portfolios spanning over 100 countries and containing many thousands of records, as well as enforcement actions, from cease and desist letters to oppositions, cancellations and litigation of trademark rights and claims. While our lawyers often specialise in either prosecution or enforcement, our entire team can do the work of both sides. We believe that knowing how to build and register a portfolio helps you enforce one, and vice versa.

Our lawyers and paralegals have experience working in big law firms, but we do not operate like one. Pranger Law utilises a lean staffing model in which the most experienced attorneys give every matter the attention it deserves. All our lawyers have at least 10 years of experience, most closer to 20 years or more, and they are directly involved with all aspects of our clients’ legal needs. We find that this model, combined with our boutique concentration and competitive rates, enables us to give the best quality and care to our clients and foreign associates.

In the past decade, Pranger Law has continued to develop its trademark, trade dress and unfair competition litigation practice, which has expanded to include patent and trade secret litigation. With the recent addition of patent prosecution, Pranger Law is now a full-service IP firm, and one of the few full-service IP firms in the world to be certified diverse and to have a woman managing partner.

Pranger Law has a history of representing some of the most significant disruptive companies, often from trademark filing number one, including Lyft (initial public offering), TaskRabbit (acquired IKEA), BleacherReport (acquired TimeWarner), Dropcam (acquired Google Nest), KiwiCo, 15Five and Crunchbase. While Pranger Law’s work product regularly appears in due diligence packages for news-worthy rounds of investment and corporate acquisitions, the firm has an equally impressive list of clients, past and present, with well-known or famous marks that have included owners such as Nike, Victoria’s Secret, LA Gear, Juicy Couture, Reddit, Business Wire, Sammy Hagar and Audatex/Solera. Pranger Law is also one of the few firms to have extensive experience supporting global certification marks, such as Video Electronics Standards Association’s VESA Design certification mark, which appears on many display electronics.

Practice areas

Trademarks

Pranger Law clears, prosecutes and manages many thousands of trademarks worldwide, with client portfolios spanning over 100 countries. Enforcement actions range from takedown demands and cease and desist letters to representing clients before US district courts and the Trademark Trial and Appeal Board, as well as managing equivalent matters with our foreign associates around the world.

Copyright  

Pranger Law leverages the comprehensive protections of the US Copyright Act, including statutory damages and attorneys’ fees recovery provisions, to help clients protect rights in software, designs and other protectable works. It is an under-utilised arrow in an IP quiver. We routinely register and enforce copyright and utilise cost-effective takedowns and, when warranted, file lawsuits.

Patents

Pranger Law can prosecute US and global patent estates in nearly any technical field, and the firm’s litigation department leverages years of patent litigation experience to enforce and defend clients in this area, including successful defences against non-practicing entities (ie, patent trolls).

Litigation

The Pranger Law litigation team brings big-firm training and experience to all IP litigation matters. In this area, Pranger Law consistently impresses clients with high-quality work product within a manageable litigation budget.

Advertising and promotions

Pranger Law has a rare specialty, offering all aspects of developing, registering and managing the legal requirements necessary to run sweepstakes, contests or consumer calls to action, including requests for user content, coupons, bounce backs and hackathons. In addition to supporting promotions, Pranger Law reviews and counsels on all aspects of advertising materials.

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