Practices
Bar Admissions
- New York
Court Admissions
- US District Court, Southern District of New York
- US District Court, Eastern District of New York
- State of New York
Clerkships
- Advocate General of Spain, Dean Acheson Legal Stagiaire
Education
- Georgetown University Law Center, J.D./M.S.F.S.
- magna cum laude
- Order of the Coif
- Associate Editor, Georgetown Law Journal
- Cornell University, BA
- with distinction
Scott M. Kareff
Special Counsel
Focuses on intellectual property and information technology work in connection with mergers and acquisitions and commercial lending transactions.
Scott’s IP and IT work includes due diligence and negotiation of IP and IT provisions in M&A transactions; data security and open source software issues; transitional services agreements and other ancillary agreements; negotiation of IP and technology licenses and IT agreements, including software and services agreements; and the acquisition of internet website domain names and other assets.
In the areas of counseling and prosecution, Scott has represented clients on trademark, copyright and right of publicity enforcement matters; domain name infringement and ICANN dispute resolution; trademark clearance; trademark and copyright prosecution; and data scrapping and online privacy issues.
The best part of my job
“Showing clients what makes me the (self-proclaimed) Hedge Fund Trademark Kingtm.”
- “Voya Financial’s Acquisition of Czech Asset Management,” Global Legal Chronicle, Aug. 9, 2022 (featured)
- “Videoconferencing: Tips for Schools to Navigate Security and Privacy Risks,” Schulte Alert, April 14, 2020
- “Videoconferencing: Tips for Fund Managers to Navigate Security, Privacy and Compliance Risks,” Schulte Alert, April 10, 2020
- “Lenders and Other Dealmakers: Update on US Patent and Trademark Office and Copyright Office – CARES Act Provides Limited Relief,” Schulte Alert, April 3, 2020
- “Lenders and Other Dealmakers: Update on US Patent and Trademark Office and Copyright Office Closures,” Schulte Alert, March 20, 2020
- “US Supreme Court: Licensor Can’t Revoke a Trademark License in Bankruptcy,” Schulte Alert, May 23, 2019, co-author
- Private Equity Funds: Formation and Operation (Practising Law Institute), 2018-2019, contributor
- “Cancellation of REDSKINS Trademark Registrations Highlights Distinction Between Registration and Use,” Schulte Alert, June 23, 2014
- “IP and IT Issues in M&A Deals,” Schulte White Paper, Nov. 2013, co-author
- “Hedge Fund Names: What a Hedge Fund Manager Should Do Before It Starts Using a Name,” The Hedge Fund Law Report, March 16, 2012, co-author
- “Court's Ruling Denying Trademark Challenge Has Implications for Hedge Fund Industry,” Schulte Alert, June 19, 2006, co-author
- “New .EU Domain Name,” Schulte Alert, Nov. 2005, co-author
- “KP Permanent Make-Up, Inc. V. Lasting Impression I, Inc.: Supreme Court Resolves Circuit Split On Fair Use Defendant's Burden,” Schulte Alert, Dec. 2004, co-author
- “Getting the Biggest Bang for Your Trademark Buck: The Madrid Protocol,” Intellectual Property Developments, March 2004, co-author
- “.us Domain Name Now Available,” Schulte Alert, March 2002, co-author
- “Playing the Name Game,” Schulte Alert, Nov. 2001, co-author
- “Internet Land Rush: Stake Your Claim to .biz and .info Domain Names,” Schulte Alert, June 2001, co-author
- “Dilution Comes to the TTAB and Other Recent Changes in Trademark Practice,” Dorsey & Whitney Intellectual Property Bulletin, Sept. 1999, co-author
- “Tetra Park International SA v. Commission (Tetra Park II): The European Approach to Monopoly Leveraging,” Law and Policy in International Business, Vol. 28, No. 2, Winter 1997
- The Legal Aid Society 2016 CLE Pro Bono Training Series: Advising Micro-Entrepreneurs, New York, Feb. 2016
- The Legal Aid Society 2015 CLE Pro Bono Training Series: Advising Micro-Entrepreneurs, New York, Jan. 2015
- “Executing Successful IP and IT Strategies in Connection with M&A,” DealFlow Media IP Investment Conference, New York, June 2014
- Bank of America Merrill Lynch Prime Broker Services Group Information Security Conference, New York, Sept. 2013
- “Executing Successful IP and IT Strategies in Connection with M&A,” iGlobal Forum Mergers & Acquisitions Investing Summit, New York, Feb. 2013
- “Running a Multi-Jurisdictional Adviser,” Schulte 20th Annual Private Investment Funds Seminar, New York, Jan. 2011
- “Making Your Mark: Trademark Selection, Clearance and Registration,” Schulte Intellectual Property and Information Technology for Investment Funds Seminar, New York, June 2003
- Member, INTA Editorial Board, The Trademark Reporter, 2002-2003 and 2004-2005; Member, INTA Bulletin, Articles Committee, Feature Articles, 2006-2007 – International Trademark Association (INTA)
- Chair, 2011-2012, Section of Intellectual Property Law, Division IV (Specialized IP Issues), Special Committee on Taxation, Bankruptcy and Security Interests, American Bar Association
- Vice Chair, 2010-2011, Section of Intellectual Property Law, Division IV (Specialized IP Issues), Special Committee on IP Security Interests, American Bar Association
- Volunteer Lawyers for the Arts – pro bono legal representation and counseling
- Lawyer’s Committee for Human Rights – pro bono legal representation in political asylum cases
- New York Super Lawyers
- Associate, Dorsey & Whitney, 1997-2000
- Associate, Simpson Thacher & Bartlett, 1994-1997
- European Court of Justice, Luxembourg City, Luxembourg
- “Voya Financial’s Acquisition of Czech Asset Management,” Global Legal Chronicle, Aug. 9, 2022 (featured)
- “Videoconferencing: Tips for Schools to Navigate Security and Privacy Risks,” Schulte Alert, April 14, 2020
- “Videoconferencing: Tips for Fund Managers to Navigate Security, Privacy and Compliance Risks,” Schulte Alert, April 10, 2020
- “Lenders and Other Dealmakers: Update on US Patent and Trademark Office and Copyright Office – CARES Act Provides Limited Relief,” Schulte Alert, April 3, 2020
- “Lenders and Other Dealmakers: Update on US Patent and Trademark Office and Copyright Office Closures,” Schulte Alert, March 20, 2020
- “US Supreme Court: Licensor Can’t Revoke a Trademark License in Bankruptcy,” Schulte Alert, May 23, 2019, co-author
- Private Equity Funds: Formation and Operation (Practising Law Institute), 2018-2019, contributor
- “Cancellation of REDSKINS Trademark Registrations Highlights Distinction Between Registration and Use,” Schulte Alert, June 23, 2014
- “IP and IT Issues in M&A Deals,” Schulte White Paper, Nov. 2013, co-author
- “Hedge Fund Names: What a Hedge Fund Manager Should Do Before It Starts Using a Name,” The Hedge Fund Law Report, March 16, 2012, co-author
- “Court's Ruling Denying Trademark Challenge Has Implications for Hedge Fund Industry,” Schulte Alert, June 19, 2006, co-author
- “New .EU Domain Name,” Schulte Alert, Nov. 2005, co-author
- “KP Permanent Make-Up, Inc. V. Lasting Impression I, Inc.: Supreme Court Resolves Circuit Split On Fair Use Defendant's Burden,” Schulte Alert, Dec. 2004, co-author
- “Getting the Biggest Bang for Your Trademark Buck: The Madrid Protocol,” Intellectual Property Developments, March 2004, co-author
- “.us Domain Name Now Available,” Schulte Alert, March 2002, co-author
- “Playing the Name Game,” Schulte Alert, Nov. 2001, co-author
- “Internet Land Rush: Stake Your Claim to .biz and .info Domain Names,” Schulte Alert, June 2001, co-author
- “Dilution Comes to the TTAB and Other Recent Changes in Trademark Practice,” Dorsey & Whitney Intellectual Property Bulletin, Sept. 1999, co-author
- “Tetra Park International SA v. Commission (Tetra Park II): The European Approach to Monopoly Leveraging,” Law and Policy in International Business, Vol. 28, No. 2, Winter 1997
- The Legal Aid Society 2016 CLE Pro Bono Training Series: Advising Micro-Entrepreneurs, New York, Feb. 2016
- The Legal Aid Society 2015 CLE Pro Bono Training Series: Advising Micro-Entrepreneurs, New York, Jan. 2015
- “Executing Successful IP and IT Strategies in Connection with M&A,” DealFlow Media IP Investment Conference, New York, June 2014
- Bank of America Merrill Lynch Prime Broker Services Group Information Security Conference, New York, Sept. 2013
- “Executing Successful IP and IT Strategies in Connection with M&A,” iGlobal Forum Mergers & Acquisitions Investing Summit, New York, Feb. 2013
- “Running a Multi-Jurisdictional Adviser,” Schulte 20th Annual Private Investment Funds Seminar, New York, Jan. 2011
- “Making Your Mark: Trademark Selection, Clearance and Registration,” Schulte Intellectual Property and Information Technology for Investment Funds Seminar, New York, June 2003
- Member, INTA Editorial Board, The Trademark Reporter, 2002-2003 and 2004-2005; Member, INTA Bulletin, Articles Committee, Feature Articles, 2006-2007 – International Trademark Association (INTA)
- Chair, 2011-2012, Section of Intellectual Property Law, Division IV (Specialized IP Issues), Special Committee on Taxation, Bankruptcy and Security Interests, American Bar Association
- Vice Chair, 2010-2011, Section of Intellectual Property Law, Division IV (Specialized IP Issues), Special Committee on IP Security Interests, American Bar Association
- Volunteer Lawyers for the Arts – pro bono legal representation and counseling
- Lawyer’s Committee for Human Rights – pro bono legal representation in political asylum cases
- New York Super Lawyers
- Associate, Dorsey & Whitney, 1997-2000
- Associate, Simpson Thacher & Bartlett, 1994-1997
- European Court of Justice, Luxembourg City, Luxembourg
Scott M. Kareff
Special Counsel
Focuses on intellectual property and information technology work in connection with mergers and acquisitions and commercial lending transactions.
Scott’s IP and IT work includes due diligence and negotiation of IP and IT provisions in M&A transactions; data security and open source software issues; transitional services agreements and other ancillary agreements; negotiation of IP and technology licenses and IT agreements, including software and services agreements; and the acquisition of internet website domain names and other assets.
In the areas of counseling and prosecution, Scott has represented clients on trademark, copyright and right of publicity enforcement matters; domain name infringement and ICANN dispute resolution; trademark clearance; trademark and copyright prosecution; and data scrapping and online privacy issues.
The best part of my job
“Showing clients what makes me the (self-proclaimed) Hedge Fund Trademark Kingtm.”
Practices
Bar Admissions
- New York
Court Admissions
- US District Court, Southern District of New York
- US District Court, Eastern District of New York
- State of New York
Clerkships
- Advocate General of Spain, Dean Acheson Legal Stagiaire
Education
- Georgetown University Law Center, J.D./M.S.F.S.
- magna cum laude
- Order of the Coif
- Associate Editor, Georgetown Law Journal
- Cornell University, BA
- with distinction
- “Voya Financial’s Acquisition of Czech Asset Management,” Global Legal Chronicle, Aug. 9, 2022 (featured)
- “Videoconferencing: Tips for Schools to Navigate Security and Privacy Risks,” Schulte Alert, April 14, 2020
- “Videoconferencing: Tips for Fund Managers to Navigate Security, Privacy and Compliance Risks,” Schulte Alert, April 10, 2020
- “Lenders and Other Dealmakers: Update on US Patent and Trademark Office and Copyright Office – CARES Act Provides Limited Relief,” Schulte Alert, April 3, 2020
- “Lenders and Other Dealmakers: Update on US Patent and Trademark Office and Copyright Office Closures,” Schulte Alert, March 20, 2020
- “US Supreme Court: Licensor Can’t Revoke a Trademark License in Bankruptcy,” Schulte Alert, May 23, 2019, co-author
- Private Equity Funds: Formation and Operation (Practising Law Institute), 2018-2019, contributor
- “Cancellation of REDSKINS Trademark Registrations Highlights Distinction Between Registration and Use,” Schulte Alert, June 23, 2014
- “IP and IT Issues in M&A Deals,” Schulte White Paper, Nov. 2013, co-author
- “Hedge Fund Names: What a Hedge Fund Manager Should Do Before It Starts Using a Name,” The Hedge Fund Law Report, March 16, 2012, co-author
- “Court's Ruling Denying Trademark Challenge Has Implications for Hedge Fund Industry,” Schulte Alert, June 19, 2006, co-author
- “New .EU Domain Name,” Schulte Alert, Nov. 2005, co-author
- “KP Permanent Make-Up, Inc. V. Lasting Impression I, Inc.: Supreme Court Resolves Circuit Split On Fair Use Defendant's Burden,” Schulte Alert, Dec. 2004, co-author
- “Getting the Biggest Bang for Your Trademark Buck: The Madrid Protocol,” Intellectual Property Developments, March 2004, co-author
- “.us Domain Name Now Available,” Schulte Alert, March 2002, co-author
- “Playing the Name Game,” Schulte Alert, Nov. 2001, co-author
- “Internet Land Rush: Stake Your Claim to .biz and .info Domain Names,” Schulte Alert, June 2001, co-author
- “Dilution Comes to the TTAB and Other Recent Changes in Trademark Practice,” Dorsey & Whitney Intellectual Property Bulletin, Sept. 1999, co-author
- “Tetra Park International SA v. Commission (Tetra Park II): The European Approach to Monopoly Leveraging,” Law and Policy in International Business, Vol. 28, No. 2, Winter 1997
- The Legal Aid Society 2016 CLE Pro Bono Training Series: Advising Micro-Entrepreneurs, New York, Feb. 2016
- The Legal Aid Society 2015 CLE Pro Bono Training Series: Advising Micro-Entrepreneurs, New York, Jan. 2015
- “Executing Successful IP and IT Strategies in Connection with M&A,” DealFlow Media IP Investment Conference, New York, June 2014
- Bank of America Merrill Lynch Prime Broker Services Group Information Security Conference, New York, Sept. 2013
- “Executing Successful IP and IT Strategies in Connection with M&A,” iGlobal Forum Mergers & Acquisitions Investing Summit, New York, Feb. 2013
- “Running a Multi-Jurisdictional Adviser,” Schulte 20th Annual Private Investment Funds Seminar, New York, Jan. 2011
- “Making Your Mark: Trademark Selection, Clearance and Registration,” Schulte Intellectual Property and Information Technology for Investment Funds Seminar, New York, June 2003
- Member, INTA Editorial Board, The Trademark Reporter, 2002-2003 and 2004-2005; Member, INTA Bulletin, Articles Committee, Feature Articles, 2006-2007 – International Trademark Association (INTA)
- Chair, 2011-2012, Section of Intellectual Property Law, Division IV (Specialized IP Issues), Special Committee on Taxation, Bankruptcy and Security Interests, American Bar Association
- Vice Chair, 2010-2011, Section of Intellectual Property Law, Division IV (Specialized IP Issues), Special Committee on IP Security Interests, American Bar Association
- Volunteer Lawyers for the Arts – pro bono legal representation and counseling
- Lawyer’s Committee for Human Rights – pro bono legal representation in political asylum cases
- New York Super Lawyers
- Associate, Dorsey & Whitney, 1997-2000
- Associate, Simpson Thacher & Bartlett, 1994-1997
- European Court of Justice, Luxembourg City, Luxembourg
- “Voya Financial’s Acquisition of Czech Asset Management,” Global Legal Chronicle, Aug. 9, 2022 (featured)
- “Videoconferencing: Tips for Schools to Navigate Security and Privacy Risks,” Schulte Alert, April 14, 2020
- “Videoconferencing: Tips for Fund Managers to Navigate Security, Privacy and Compliance Risks,” Schulte Alert, April 10, 2020
- “Lenders and Other Dealmakers: Update on US Patent and Trademark Office and Copyright Office – CARES Act Provides Limited Relief,” Schulte Alert, April 3, 2020
- “Lenders and Other Dealmakers: Update on US Patent and Trademark Office and Copyright Office Closures,” Schulte Alert, March 20, 2020
- “US Supreme Court: Licensor Can’t Revoke a Trademark License in Bankruptcy,” Schulte Alert, May 23, 2019, co-author
- Private Equity Funds: Formation and Operation (Practising Law Institute), 2018-2019, contributor
- “Cancellation of REDSKINS Trademark Registrations Highlights Distinction Between Registration and Use,” Schulte Alert, June 23, 2014
- “IP and IT Issues in M&A Deals,” Schulte White Paper, Nov. 2013, co-author
- “Hedge Fund Names: What a Hedge Fund Manager Should Do Before It Starts Using a Name,” The Hedge Fund Law Report, March 16, 2012, co-author
- “Court's Ruling Denying Trademark Challenge Has Implications for Hedge Fund Industry,” Schulte Alert, June 19, 2006, co-author
- “New .EU Domain Name,” Schulte Alert, Nov. 2005, co-author
- “KP Permanent Make-Up, Inc. V. Lasting Impression I, Inc.: Supreme Court Resolves Circuit Split On Fair Use Defendant's Burden,” Schulte Alert, Dec. 2004, co-author
- “Getting the Biggest Bang for Your Trademark Buck: The Madrid Protocol,” Intellectual Property Developments, March 2004, co-author
- “.us Domain Name Now Available,” Schulte Alert, March 2002, co-author
- “Playing the Name Game,” Schulte Alert, Nov. 2001, co-author
- “Internet Land Rush: Stake Your Claim to .biz and .info Domain Names,” Schulte Alert, June 2001, co-author
- “Dilution Comes to the TTAB and Other Recent Changes in Trademark Practice,” Dorsey & Whitney Intellectual Property Bulletin, Sept. 1999, co-author
- “Tetra Park International SA v. Commission (Tetra Park II): The European Approach to Monopoly Leveraging,” Law and Policy in International Business, Vol. 28, No. 2, Winter 1997
- The Legal Aid Society 2016 CLE Pro Bono Training Series: Advising Micro-Entrepreneurs, New York, Feb. 2016
- The Legal Aid Society 2015 CLE Pro Bono Training Series: Advising Micro-Entrepreneurs, New York, Jan. 2015
- “Executing Successful IP and IT Strategies in Connection with M&A,” DealFlow Media IP Investment Conference, New York, June 2014
- Bank of America Merrill Lynch Prime Broker Services Group Information Security Conference, New York, Sept. 2013
- “Executing Successful IP and IT Strategies in Connection with M&A,” iGlobal Forum Mergers & Acquisitions Investing Summit, New York, Feb. 2013
- “Running a Multi-Jurisdictional Adviser,” Schulte 20th Annual Private Investment Funds Seminar, New York, Jan. 2011
- “Making Your Mark: Trademark Selection, Clearance and Registration,” Schulte Intellectual Property and Information Technology for Investment Funds Seminar, New York, June 2003
- Member, INTA Editorial Board, The Trademark Reporter, 2002-2003 and 2004-2005; Member, INTA Bulletin, Articles Committee, Feature Articles, 2006-2007 – International Trademark Association (INTA)
- Chair, 2011-2012, Section of Intellectual Property Law, Division IV (Specialized IP Issues), Special Committee on Taxation, Bankruptcy and Security Interests, American Bar Association
- Vice Chair, 2010-2011, Section of Intellectual Property Law, Division IV (Specialized IP Issues), Special Committee on IP Security Interests, American Bar Association
- Volunteer Lawyers for the Arts – pro bono legal representation and counseling
- Lawyer’s Committee for Human Rights – pro bono legal representation in political asylum cases
- New York Super Lawyers
- Associate, Dorsey & Whitney, 1997-2000
- Associate, Simpson Thacher & Bartlett, 1994-1997
- European Court of Justice, Luxembourg City, Luxembourg