Casey Scott McKay
Attorney · Technology and IP Law · MC Law, PLLC
Software engineer turned IP attorney, Casey advises technology and science companies — and the investors behind them — from first patent to successful exit. He previously built cybersecurity systems at Fannie Mae and consulted on data science and machine learning at Thunken, Inc. He is the attorney of record for the trademark matters Marksy refers to MC Law, PLLC, and writes the knowledge base's guides, checklists and toolkits.
- Admitted: Tennessee (#034028)
- Practice: Patent, trademark and copyright; practice before the USPTO
- Affiliation: MC Law, PLLC — how the referral works
- Full profile
Marksy is not a law firm and is not a substitute for an attorney or law firm. Marksy is an automated online service and an advertising business. Marksy does not provide legal advice, does not practice law, and no attorney–client relationship is formed with Marksy. Where attorney services are involved, they are provided by independent, licensed attorneys who are solely responsible for the legal services they render.
Documents by Casey Scott McKay (926)
- Goods, Services, and the Nice Classes: A Classification Checklist · Checklist — A trademark protects only the goods and services you actually claim, and the USPTO files every offering into the 45 standardized drawers of the Nice…
- Genericide: How Brands Lose Trademarks by Becoming Generic · Article — Genericide is the rare and devastating fate of a trademark that becomes so successful the public turns the brand name into the ordinary word for the product…
- From Filing to Registration: A USPTO Application Checklist · Checklist — This is the operational, box-by-box checklist for federal trademark prosecution—the working tick-list you run from the first screen of the application through…
- From Descriptive to Distinctive: How Marks Acquire Secondary Meaning · Article — A descriptive term cannot be a trademark until buyers stop hearing it as a description and start hearing it as a brand—a shift the law calls secondary meaning…
- Filing Your Trademark at the USPTO: A Founder’s Walkthrough · Article — A current, founder-friendly walkthrough of registering a trademark or service mark with the U.S. Patent and Trademark Office, built for entrepreneurs, in-house…
- Filing the Statement of Use: A Checklist for Intent-to-Use Applicants · Checklist — A practical, phase-by-phase checklist for finishing an intent-to-use (ITU) trademark application by filing a Statement of Use after the USPTO issues a Notice…
- Filing a UDRP Domain-Name Complaint: A Step-by-Step Checklist · Checklist — A practitioner-grade, phase-by-phase checklist for clawing a hijacked domain name back from a cybersquatter through ICANN's Uniform Domain-Name…
- Filing a Trademark Infringement Complaint in Federal Court: A Litigation Checklist · Checklist — Winning a trademark case begins long before trial — it begins with a complaint built so carefully that it survives a motion to dismiss, lands in the right…
- Filing a Notice of Opposition at the TTAB: An Opposer’s Checklist · Checklist — Publication in the Official Gazette opens a narrow window in which any party who would be damaged by a registration can stop it before it ever issues. This…
- Fair Use in Trademark Law: Descriptive and Nominative Defenses · Article — Trademark law uses the phrase "fair use" for two very different defenses, and confusing them is one of the most common and costly mistakes a brand owner or an…
- Ex Parte Appeals to the TTAB: Appealing a Final Refusal · Article — When a USPTO examining attorney makes a refusal final, an applicant who still wants the registration can appeal to the Trademark Trial and Appeal Board under…
- Establishing Secondary Meaning: A Section 2(f) Evidence Checklist · Checklist — A descriptive term, an ordinary surname, a place name, a single color, or a product shape cannot be owned as a trademark until buyers stop hearing it as a…
- DMCA Takedowns: How to Send One, How to Fight One · Guide — A practical, two-sided guide to the DMCA's notice-and-takedown system under 17 U.S.C. Section 512. It explains the safe-harbor bargain that makes platforms…
- Disparaging Marks and the First Amendment: The Redskins, The Slants, and Matal v. Tam · Article — Can the federal government refuse to register a brand because someone finds it offensive? For seventy years the Lanham Act said yes, and the most contested…
- Designing a Trademark Survey That Survives: A Methodology Checklist · Checklist — A trademark survey is the rare witness that can speak for thousands of consumers at once, and the rare witness whose entire testimony can be excluded before…
- Consumer Survey and Expert Evidence Toolkit: Surveys, Experts, and Daubert · Toolkit — Consumer surveys and the experts who build, defend, and attack them are where a great many trademark cases are quietly decided, and this toolkit is the guided…
- Conducting a Trademark Portfolio Audit: A Brand Owner’s Checklist · Checklist — A trademark portfolio is a living asset that decays quietly unless someone inventories it, stress-tests it, and prunes it on a schedule. This Marksy checklist…
- Concurrent Use Proceedings at the TTAB: Dividing the Country · Article — Federal trademark registration usually behaves like an all-or-nothing prize: one owner takes the whole country, and everyone holding a confusingly similar mark…
- Common-Law Trademark Rights: Owning a Mark Without Registering · Article — In the United States, trademark rights are born from use, not paperwork, which means a business can own and enforce a brand without ever filing a form. This…
- Common-Law Rights and Geographic Scope Toolkit: Unregistered Marks and Priority · Toolkit — This toolkit is a guided research path through everything Marksy has published on unregistered trademark rights, priority, and the geography of brand…
- Cease-and-Desist Letters: A Two-Sided Playbook for Senders and Recipients · Article — A trademark cease-and-desist letter is usually the first real move in a brand dispute, and how it is written—or answered—often decides the whole game before a…
- Cancelling a Registration in Court: Section 37 and Federal Litigation · Article — A federal trademark registration looks final, but it is a correctable entry in a public ledger, and a court can strike it. This guide explains how…
- Cancelling a Registration at the TTAB: A Petitioner’s Checklist · Checklist — A federal registration is formidable but never untouchable: under Section 14 of the Lanham Act it can be cancelled when it should never have issued or no…
- Can You Trademark Your Own Name? Surnames, Fame, and the Right of Publicity · Article — Your own name can absolutely become a federal trademark, yet the Lanham Act makes it one of the harder marks to register, and this guide explains exactly why…
- Can You Copyright a Font? Style, Typefaces, and the Fine Line · Article — Can you copyright a font? The honest answer arrives in three parts, because copyright law sees three different objects where most people see one. An artistic…
- Brand Launch IP Clearance Checklist: Vetting a New Name Before You Spend · Checklist — Launching a brand is the single most expensive moment to discover an intellectual-property problem, because by then you have already paid for the name on…
- Appealing a Trademark Case in the Second Circuit: Standards of Review · Article — When a trademark case reaches the United States Court of Appeals for the Second Circuit, the standard of review usually matters more than the merits, because…
- Answering a Trademark Office Action: A Response Checklist · Checklist — A working checklist for answering a USPTO trademark office action, updated for the three-month response clock (extendable once for a fee) that replaced the old…
- An IP Strategy for Your Mobile App: Patents, Copyright, Trademarks, and Trade Secrets · Article — A mobile app looks like a single product, but the law sees four overlapping properties at once: a brand protected by trademark, expression protected by…
- Winning the Paper War: Discovery in TTAB Proceedings · Article — This guide explains how discovery actually works in the inter partes proceedings (oppositions and cancellations) decided by the Trademark Trial and Appeal…
- What Federal Registration Actually Buys You: The Lanham Act Advantages, Decoded · Article — Trademark rights are born from use, not paperwork, yet federal registration on the Principal Register is the best-value upgrade a brand owner can buy,…
- Three Tiers of Trademark Rights: Common Law, the Supplemental Register, and the Principal Register · Article — Many founders believe a brand name is either "trademarked" or it is not, but American law actually recognizes three separate tiers of protection, and the gap…
- The USPTO Application Filing Checklist: Every Box You Must Tick · Checklist — A phase-by-phase pre-flight checklist for preparing and filing a federal trademark application with the USPTO, rebuilt around the January 18, 2025 fee overhaul…
- The Time Machine of Trademark Priority: Constructive Use Under Section 7(c) · Article — The most valuable date in a brand's life is usually the day it filed its federal trademark application, and the reason is a doctrine called constructive use.…
- The Complete Trademark Filing Checklist: From Clearance to Certificate · Checklist — A phase-by-phase checklist that walks a federal trademark from its first clearance search to the registration certificate and beyond, pairing every box you…
- The Art of the Trademark Cease-and-Desist Letter · Article — A trademark cease-and-desist letter is the most consequential page most brand owners ever write, and the gap between one that quietly ends a dispute and one…
- Striking First: Declaratory Judgment Actions in Trademark Disputes · Article — A declaratory judgment action flips a trademark dispute on its head, letting the party that has been accused or threatened sue first and ask a federal court to…
- Protecting the Shape of a Product: Design Patents Versus Trade Dress · Article — A company that wants to lock down the way its product looks must choose between two protections that share almost nothing but a goal: the design patent, a…
- Keeping the Survey Out: Daubert Challenges to Trademark Survey Experts · Article — A consumer survey can hand a trademark plaintiff something close to direct proof of confusion, and that is exactly why the defense so often fights to keep a…
- Judge or Jury? Choosing Your Factfinder in Trademark Litigation · Article — A trademark lawsuit is rarely tried by a single factfinder. The same case is usually carved in two, with a jury deciding the legal half and a judge deciding…
- Guarding Your Brand on the Open Internet: A Strategic Playbook · Article — This playbook explains how a modern business defends its brand across the internet, from the federal registration that anchors online rights through…
- Four Ways to Own an Idea: Copyright, Trademark, Patent, and Trade Secret · Article — "Intellectual property" sounds like a single thing, but it is really four separate legal systems—copyright, trademark, patent, and trade secret—each built on…
- Fair Use After Warhol v. Goldsmith: Transformativeness Reconsidered · Article — Fair use is the safety valve that keeps copyright from smothering the creativity it exists to encourage, and the Supreme Court's 2023 decision in Andy Warhol…
- Dividing the Spoils: Apportioning Profits and Damages in Trademark Cases · Article — Winning a trademark case on liability is not the same as collecting a large judgment. This article explains apportionment, the doctrine that limits a…
- Deadwood and Bad Actors Toolkit: Cleaning the Register and Policing the Filing System · Toolkit — A cluttered register blocks legitimate applicants, and much of the clutter is registrations for marks nobody uses, obtained with specimens nobody made. This…
- Copyright, Trademark, and Patent: Telling the Three Pillars of IP Apart · Article — Copyright, trademark, and patent are not three words for one idea; they are three separate legal systems built to protect three different kinds of value, with…
- Copyright or Trademark? Sorting Out Which One Protects What · Article — Copyright and trademark are the two forms of intellectual property people confuse most, and the mistake routinely costs founders money, lawsuits, and the very…
- Cease-and-Desist Drafting Checklist for Trademark Owners · Checklist — A working drafting checklist for trademark owners who want a cease-and-desist letter that actually stops the infringement without handing the recipient a…
- Building a Bulletproof Consumer Survey in Trademark Cases · Article — A trademark survey is not a poll; it is a controlled experiment, and like any experiment it lives or dies on its method. This guide walks business owners and…
- Trying a Trade Secret Case: Identification, Protective Orders, and the Proof Problem · Article — A trade secret case is unlike any other intellectual property case because the plaintiff must describe the thing it is suing over without destroying it, and…
- Incident Response and Breach Notification Toolkit · Toolkit — A data breach is a legal problem disguised as a technical one, and the decisions that determine how it ends are made in the first four hours by people who do…
- Brand Valuation and Monetization Toolkit: Royalties, Collateral, and Deal Value · Toolkit — A brand is an asset that appears on no balance sheet until somebody buys it, borrows against it, licenses it, or sues over it - and at that moment somebody has…
- Additive Manufacturing IP Checklist: File Ownership, Patent and Design Coverage, Bureau Terms, Digital Controls, and Takedown Practice · Checklist — This checklist builds an additive manufacturing IP position in the order that eliminates work rather than the order that feels doctrinal. Phase one settles who…
- Gray Market Goods: The First Sale Doctrine, Material Differences, and Parallel Imports · Article — Gray market goods are genuine products made or authorized by the brand owner but imported and resold in the United States outside its distribution system, and…
- Chemicals, Materials, and Formulations IP Toolkit: Claims, Data, Secrecy, and Regulatory Files · Toolkit — Chemical and materials inventions are claimed in structures, ranges, and functional properties, and each of those raises a scope problem the mechanical arts do…
- Building a Biometric Compliance Program: A Practitioner's Guide to Notice, Consent, Retention, and Vendors · Guide — This guide builds a biometric compliance program from an empty page and remediates one that started without a release. It begins with the inventory, which is…
- Domain Name and Digital Identity Toolkit: gTLDs, the Clearinghouse, and Recovery · Toolkit — A brand's digital identity spans domains, handles, app listings, and on-chain names, and only one of those layers has a real dispute system. This toolkit maps…
- Claiming Life: Biotechnology Patents, Written Description, and the Sequence You Cannot Quite Own · Article — Biotechnology is the field where patent law's basic categories fit least comfortably, because the subject matter is discovered as often as it is invented and…
- Translation, Localisation, and Adaptation Rights Toolkit: Grants, Vendors, Moral Rights, and Markets · Toolkit — A translation is a derivative work, which means it needs permission, and it is also an original work, which means the translator owns it unless the contract…
- Digital Replica Checklist: Consent, Scope, Compensation, Credit, and Revocation · Checklist — A digital replica consent fails on provisions nobody negotiated, and the standard likeness release satisfies almost none of the new statutory requirements.…
- Building a Digital Health Product: A Practitioner's Guide to HIPAA Boundaries, Breach Notification, Clinical Data, and Platform Terms · Guide — This guide builds the legal architecture a digital health product actually needs, starting with the determination that decides everything else: whether the…
- Aviation, Aerospace, and Drone IP Toolkit: Technical Data, Approvals, Suppliers, and Imagery · Toolkit — Aerospace is the sector where intellectual property and regulatory approval are welded together, and where a practitioner who understands only one of them will…
- Trade Secret Protection Toolkit: Programs, Departures, and DTSA Litigation · Toolkit — This toolkit is a guided tour of every Marksy document that bears on trade secret protection, arranged in the order the work actually happens: build the…
- Taking It Apart: Reverse Engineering, Interoperability, and the Law of Compatible Products · Article — Taking a product apart to learn how it works is lawful in most circumstances and unlawful in several specific ones, and the difference turns on which body of…
- IP Appeals and Appellate Strategy Toolkit: Jurisdiction, Preservation, Standards, and Briefs · Toolkit — An appeal is a review, on a closed record, of specific rulings that were properly objected to at the time, conducted under a standard of review that in most…
- Assessing and Defending an Assertion-Entity Case: A Practitioner's Guide to Standing, Funding Discovery, Real Parties, and Fee Exposure · Guide — This guide runs the defence of an assertion-entity case from the day the complaint arrives to the fee motion at the end. It starts with the structure analysis…
- Wine, Beer, and Spirits Brand Toolkit: Label Approval, Appellations, Tiers, and Advertising · Toolkit — Alcohol is the sector where the trademark register is the least important approval a brand needs. A label must clear a federal review before it can be used, a…
- Art Transaction Checklist: Title and Provenance, Authentication Evidence, Consignment Terms, Reproduction Rights, and Export Restrictions · Checklist — This checklist runs an art transaction from description to delivery, in the order that lets each step stop the deal cheaply before the next one costs money.…
- Preventing Genericide: A Brand Owner's Guide to Trademark Style, Policing, and Primary Significance Evidence · Guide — This guide builds the anti-genericide program a brand owner actually runs, stage by stage, from the day a mark launches through the day a cancellation petition…
- Statement of Use Filing Checklist: Specimens, Dates, and the Six-Month Clock · Checklist — This checklist runs a Section 1(b) application from the day the notice of allowance issues to the day the registration certificate is docketed, in eleven…
- IP Audit Checklist: Asset Inventory, Chain of Title, Encumbrances, Maintenance, Budget, and Board Reporting · Checklist — This checklist runs an intellectual property audit as a defined engagement, in the order the work actually proceeds. It opens with scoping and privilege…
- Naming a Building: Property Marks, Development Brands, and the Signage That Outlives the Owner · Article — A building has a name, and the name is worth something to at least four parties who each assume they own it. This article works through what a property name…
- Advertising Agency and Creative Services Toolkit: Pitches, Ownership, Assets, and Exit · Toolkit — An advertising campaign is assembled from material owned by a dozen parties and delivered under an agreement that addresses almost none of them. This toolkit…
- Trademark Refusals and Statutory Bars Toolkit: Every Way an Application Dies and How to Save It · Toolkit — This toolkit is a curated tour of every way a United States trademark application can die and every cure the statute allows, organized around the question that…
- Copying a Dress: Fashion, the Useful Article Doctrine, and Why Design Piracy Is Mostly Legal · Article — American law protects a printed textile and leaves the dress it becomes almost entirely unprotected, which is why fast fashion is a business rather than a…
- Branding a Professional Practice: A Practitioner's Guide to Firm Names, Credential Claims, Advertising Rules, and Departures · Guide — This guide sets out how to build and run a professional firm's brand under two regimes at once — ordinary trademark law and the profession's own advertising…
- Protecting a Food, Beverage, or Restaurant Brand: A Practitioner's Guide to Marks, Trade Dress, Recipes, and Labelling · Guide — This guide runs the intellectual property programme for a food, beverage, or restaurant business in the sequence the decisions actually arise. It starts with…
- Fair Use After Warhol: Transformative Purpose, Market Harm, and the Four Factors · Article — This article explains how the fair use defense codified at Section 107 actually works after Andy Warhol Foundation v. Goldsmith (2023), which recentered the…
- Contract Manufacturing IP Checklist: Tooling and Mould Ownership, Specification and Improvement Terms, Confidentiality Controls, Overrun and Gray Goods, and Exit · Checklist — A contract manufacturing relationship transfers designs, specifications, process knowledge, tooling, and trademarks to a party in another jurisdiction, usually…
- Where the Royalty Lands: IP Holding Companies, Transfer Pricing, and the Tax Shape of a Portfolio · Article — Where a company's intellectual property sits determines who is taxed on the income it produces, and for large portfolios that question is worth more than most…
- Deploying Generative AI Without Losing Your IP: A Practitioner's Guide to Authorship, Disclosure, and Contracts · Guide — This guide is the operational companion to the Marksy article on AI authorship: twelve numbered stages that take a company from "our designers started using…
- Producing a Podcast or Audio Series: A Practitioner's Guide to Music Licensing, Releases, Show Marks, and Distribution · Guide — This guide takes an audio series from the naming decision to the archive, in the order the work has to be done. It covers clearing and filing the show name,…
- Rogers, Jack Daniel's, and the Trademark Parody Problem · Article — This article explains how American trademark law handles parody, criticism, and other expressive uses of someone else's brand, from the Second Circuit's 1989…
- Applying for a Certification or Collective Mark: A Practitioner's Guide to Standards, Governance, and Control · Guide — This guide walks a certification or collective mark from the first client conversation to the tenth-year renewal, in fourteen numbered stages. It starts with…
- Filing or Defeating a Declaratory Judgment Action: A Practitioner's Guide to Case or Controversy, the First-Filed Rule, and Forum · Guide — This guide is the operational half of the Marksy article on declaratory judgment actions, and it assumes you know what MedImmune did to the…
- Assessing and Defending a Section 230 Position: A Practitioner's Guide to the Three Elements, the Carve-Outs, and Early Dismissal · Guide — This guide is the working sequence for evaluating and defending a Section 230 position from the day a complaint arrives to the order on the motion. It starts…
- Copyright Enforcement Toolkit: Takedowns, Demands, and Federal Litigation · Toolkit — This toolkit maps the entire copyright enforcement ladder in the Marksy corpus and tells you which rung to stand on for a given dispute — monitoring and…
- The Data in the Dirt: Precision Agriculture, Farm Machinery, and Who Owns What the Field Reports · Article — A modern combine harvester generates more data per hour than most industrial equipment, and almost none of the arrangements governing that data were designed…
- Promotion Launch Checklist: Structure, Official Rules, Registration, Platform Terms, and Winner Documentation · Checklist — This checklist takes a promotion from the marketing request to the closed file, with gates at the points where a mistake cannot be corrected later. It begins…
- Content-Based Section 2 Refusal Checklist: Consent, Connection, and Insignia · Checklist — Twelve phases for the lawyer holding an office action that refuses a mark because of what it says about somebody. It sorts the six refusals that arrive in this…
- Advising a Space or Satellite Business: A Practitioner's Guide to Jurisdiction, Payload Data, Launch Contracts, and Imagery Licensing · Guide — This guide builds an intellectual property programme for a space or satellite business in the order the decisions arise. It begins with export classification…
- Insurance Industry IP Toolkit: Wordings, Rating Models, Data Sources, and Distribution · Toolkit — An insurance product is a document, a model, and a distribution arrangement, and each of the three raises intellectual property questions that the sector has…
- Trademark Dilution Claim Checklist: Proving Fame, Association, and Harm · Checklist — This checklist runs a federal dilution matter under 15 U.S.C. § 1125(c) from the intake fame audit to the final decree, in eleven phases a team can work top to…
- How Trademark Disputes Actually End: Settlement, Consent Judgments, and the Terms That Hold · Article — Almost no trademark dispute is decided by a judge. They end in agreements, and the quality of those agreements varies enormously - some hold for thirty years…
- Building for Someone Who Cannot Consent: COPPA, Age Signals, and the New Design Duties · Article — The children's privacy regime asks a question no other privacy law asks - whether the product is for children at all - and the answer determines whether an…
- Advising a Recycling or Circular Economy Business: A Practitioner's Guide to Recovery Processes, Recycled Content Claims, Take-Back Programmes, and Feedstock Agreements · Guide — A working guide to acting for recyclers, reprocessors, refurbishers, brands running take-back schemes, and the equipment vendors who supply them. It opens with…
- Telecommunications IP Checklist: Spectrum and Licence Conditions, Equipment and Firmware Terms, Interconnection Agreements, Standards Exposure, and Subscriber Data · Checklist — This checklist audits the intellectual property position of a carrier or network operator in the order the questions arise. It begins with the asset register,…
- Competitive Intelligence and Benchmarking Toolkit: Lawful Collection, Clean Rooms, and Contamination · Toolkit — Competitive intelligence is lawful, valuable, and one wrong hire away from a misappropriation claim. This toolkit assembles the working material for…
- Retail Media and Shopper Data Checklist: Data Ownership and Basis, Supplier and Brand Terms, Measurement and Attribution Claims, Clean Room Arrangements, and Consumer Rights Handling · Checklist — A ten-phase working checklist for retailers building media networks, brands buying from them, agencies sitting between, and the vendors supplying the…
- Determining and Correcting Inventorship: A Practitioner's Guide to Conception Evidence, Section 256 Correction, and Ownership Consequences · Guide — This guide takes inventorship from the invention disclosure form to the correction petition, and it is written for the practitioner who has to run the analysis…