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)
- Building a Privacy Compliance Program for a Consumer Brand: A Practitioner's Guide to Notices, Rights, and Adtech · Guide — A build guide for the privacy program a consumer brand actually needs, ordered by risk reduction per dollar rather than by statutory section. It starts with…
- The Mark on the Clasp: Jewellery, Watches, and the Authentication Economy · Article — A watch or a piece of jewellery is a small object carrying a large number of overlapping rights. Design patents cover the case and the bracelet, trade dress…
- Naked Licensing: How Sloppy Quality Control Kills a Trademark · Article — Naked licensing is the doctrine that a trademark owner who licenses its mark without controlling the nature and quality of the licensee's goods or services…
- IP Discovery and Source Code Review Toolkit: Holds, Protocols, Protective Orders, and Sanctions · Toolkit — The evidence that decides an intellectual property case was written by an engineer who had no idea it would be read in court. Whether it still exists depends…
- IP Audit and Portfolio Governance Toolkit: Inventory, Ownership, Cost, and Reporting · Toolkit — Most intellectual property audits answer the one question that is easy to answer and skip the three that produce decisions. This toolkit collects the whole…
- VARA and Attribution Checklist: Commissioning, Waivers, Notice, and Removal · Checklist — Fifteen phases covering a work of visual art from commissioning to removal, written for whichever chair you occupy. Phase one is a five-question coverage…
- Selling the System: Franchising, System Standards, and the Marks That Hold a Network Together · Article — A franchise is a trademark licence with a system attached and a fee on top, and the intellectual property questions run through all three. This article…
- Patent Term Checklist: PTA Audit, PTE Eligibility, Double Patenting Screening, and Terminal Disclaimer Consequences · Checklist — This checklist treats patent term as a portfolio discipline with hard, unrecoverable deadlines rather than as a prosecution detail. It starts by building the…
- Protecting a Furniture or Homewares Line: A Practitioner's Guide to Separability, Design Filings, Trade Dress, and Reproduction Control · Guide — This guide is for counsel building an intellectual property programme for a furniture or homewares business, and it starts from the fact that most of what the…
- Sending and Fighting a DMCA Takedown: A Practitioner's Guide to Notices, Counter-Notices, and Misrepresentation Claims · Guide — This is the working manual for the notice-and-takedown machinery of 17 U.S.C. 512 - what to do, in what order, on what clock, and at what cost. Fifteen…
- Sports and Event IP Toolkit: Event Marks, Sponsorship, Broadcast, and Ambush Marketing · Toolkit — Sponsorship sells an association, and an association is not property - which is why ambush marketing persists, why most of it is lawful, and why the strongest…
- What the Copyright Act Kills: Section 301 Preemption and the State-Law Claims That Survive · Article — A plaintiff with a copying problem instinctively pleads five state-law claims alongside the copyright count, and Section 301 removes most of them. This article…
- The Image Business: Photography, Stock Licensing, and Visual Content Rights · Article — Photography is the most-licensed and least-understood category of copyrighted work, and most disputes about images are disputes about a license nobody read.…
- Advising a Political Campaign or Advocacy Organisation: A Practitioner's Guide to Content Clearance, Likeness, Platform Rules, and Disclaimers · Guide — A working guide to advising campaigns, committees, advocacy organisations, and the vendors who produce their content. It opens with the operating environment…
- Content Moderation Checklist: Policy Scope and Drafting, Notice and Appeal Design, Enforcement Records, Transparency Reporting, and Jurisdictional Overlays · Checklist — This checklist audits a content moderation programme in the order the work has to be done, which begins with the decision record rather than with the policy. A…
- Trade Secret Protection and Departure Checklist: Inventory, Controls, and Exit Forensics · Checklist — This is the working document for the two jobs a trade secret program has to do: build the record before anything goes wrong, and execute cleanly in the…
- Clearing a Work for Public Domain Use: A Practitioner's Guide to Duration Analysis, Renewal Research, Restoration, and Risk Documentation · Guide — This guide clears a work for use, producing a memorandum rather than an answer, in the order the research should be done. It starts with identifying the…
- Clearing a Pharmaceutical or Device Brand Name: A Practitioner's Guide to FDA Review, Trademark Clearance, and Timing · Guide — A build guide for a regulated naming program, ordered so that candidates are eliminated before anyone becomes attached to them. It opens with the written…
- Carve-Out and Divestiture IP Checklist: Asset Identification and Splitting, Shared and Retained Rights, Transitional Licences and Services, Recordation and Registry Updates, and Brand Migration Milestones · Checklist — A ten-phase working checklist for the intellectual property workstream in a carve-out, divestiture, or spin-off, usable on either side. Phases one and two run…
- Information the Government Holds: Open Data, Public Records, and the Rights in Facts Anyone Can Request · Article — Public data feels free and frequently is not, and the ways in which it is not are unintuitive. Federal government works are outside copyright by statute, but…
- Design Patent Toolkit: Filing, Scope, and Enforcement · Toolkit — Design patents are the cheapest and fastest exclusionary right in the American system, and most companies that should hold them do not. This toolkit covers…
- What the Border Asks: Tariffs, Origin, Forced Labour, and the Trade Compliance Layer Under Every Import · Article — Every imported product carries a compliance layer that most intellectual property lawyers never see and that can stop a shipment more effectively than any…
- Gray Market and Exhaustion Checklist: Chain of Sale, Material Differences, Contract Controls, Customs Recordation, and Enforcement · Checklist — This checklist runs a gray market matter from first detection through remedy selection. It begins by establishing the chain of sale, because whether the sale…
- Brand Ownership Dispute Checklist: Evidence, Entity Records, and Separation Terms · Checklist — Eighteen phases for the dispute that arrives when a business breaks up and nobody documented who owns the name. Phase zero handles conflicts and engagement,…
- Advising an Esports or Streaming Business: A Practitioner's Guide to Publisher Licences, Broadcast Rights, Player Contracts, and Sponsorship · Guide — This guide is for counsel advising an esports organiser, team, or streaming business. It starts from the fact that almost nothing in the value chain belongs to…
- Online Terms and Consumer Contracts Toolkit: Formation, Arbitration, and Dark Patterns · Toolkit — An online contract is only worth what its formation record can prove, and most companies cannot prove theirs. This toolkit works the formation spectrum from…
- IP Due Diligence Toolkit for Mergers, Financings, and Asset Sales · Toolkit — This toolkit is the cross-discipline guide to intellectual property diligence in a merger, a secured financing, or an asset sale, and it assembles every Marksy…
- Trade Names, DBAs, and Entity Names: The Rights That Are Not Trademarks · Article — Four different names attach to one business, they are governed by four different systems, and confusing them is the single most common naming mistake small…
- Selling to the Government Without Giving Away the Technology: Data Rights, Bayh-Dole, and Marking · Article — Selling technology to the federal government transfers rights that most companies never intended to give, and the transfer happens through clauses incorporated…
- Advising a Utility or Grid Technology Business: A Practitioner's Guide to Metering Data, Vendor Terms, Interconnection, and Critical Infrastructure Rules · Guide — A practitioner's guide to advising in the utility and grid technology sector, written for lawyers arriving from ordinary technology practice. It begins by…
- Collectibles and Auction Checklist: Title and Provenance, Authentication and Grading Terms, Reproduction and Image Rights, Consignment and Platform Terms, and Counterfeit Response · Checklist — This checklist audits a collectibles or auction position from any side of the trade. It begins with title rather than authenticity, because a thief passes no…
- Software Continuity and Escrow Toolkit: Vendor Failure, Support Rights, and Exit · Toolkit — Software escrow is the most commonly purchased and least commonly useful continuity control in technology contracting, and the reason is that companies buy the…
- Trademark Defenses Toolkit: Fair Use, Free Speech, Priority, Abandonment, and Estoppel · Toolkit — This toolkit is the curated shelf for the defendant's side of a trademark dispute, organized the way a defense gets built rather than the way the statute is…
- Trademark Fraud Claim and Self-Audit Checklist: Declarations, Specimens, and Cure · Checklist — This checklist is the working instrument for two jobs that share a single body of law: auditing your own USPTO declarations before someone else does, and…
- Taking an Ex Parte Appeal: A Practitioner's Guide to TTAB Briefing, Oral Hearing, and Federal Circuit Review · Guide — This is the working manual for taking a trademark application from a final refusal through the Trademark Trial and Appeal Board and, if necessary, into court.…
- Buildings Are Works Too: Architectural Copyright, Technical Drawings, and the Sightline Exception · Article — A building is protected by copyright and a photograph of it from the street is not an infringement, which is the oddest pairing in the statute and the one…
- Specimen Refusals: Why the USPTO Rejected Your Proof of Use · Guide — A specimen refusal says your evidence of use failed, not that your mark is unregistrable — which is why most of them are curable in a single response if you…
- Responding to Novelty and Obviousness Rejections: A Practitioner's Guide to Sections 102 and 103 and the Prima Facie Case · Guide — Novelty and obviousness rejections account for most of what a patent prosecutor does, and the response is a craft with a definite structure. This guide walks…
- Endorsements, Influencers, and the Law of Paid Praise · Article — Paid praise is now a multibillion-dollar advertising channel governed by a body of law most of the people using it have never read. This article explains the…
- Enforcing Against Platforms, Landlords, and Service Providers: A Practitioner's Guide to Secondary Trademark Liability · Guide — This guide is the operational half of the Marksy article on contributory and vicarious trademark liability, and it assumes you know the Inwood test and why…
- When Your Licensor Goes Bankrupt: Trademark Licenses, Section 365, and the Mission Product Rule · Article — For thirty-four years, a trademark licensee whose licensor filed for bankruptcy faced a peculiar and unfair rule: patent and copyright licensees got statutory…
- Trademark Counterfeiting: Civil Seizures, Statutory Damages, and Criminal Exposure · Article — Counterfeiting is the one corner of trademark law where a plaintiff can seize a defendant's inventory before the defendant knows a lawsuit exists, elect…
- Clearing and Filing for Virtual Goods, NFTs, and Digital Collectibles: A Practitioner's Guide · Guide — This guide is the operational half of the Marksy article on trademarks in virtual worlds, and it assumes you know why Jack Daniel's changed the expressive-use…
- The Section 44 Route: Paris Convention Priority, Foreign Registrations, and Filing Without Use · Article — Most American trademark practitioners spend their careers inside a use-based system and then meet a registration that never required any use at all. Section 44…
- Running Copyright Compliance at an Educational Institution: A Practitioner's Guide to Policy, the TEACH Act, Course Materials, and Vendors · Guide — This guide builds copyright compliance at an educational institution as four connected systems rather than as a policy document nobody reads. It starts with…
- Patent Prosecution Checklist: Filing Papers, Deadlines, Continuations, and the Issue Fee · Checklist — Patent rights are lost to calendars far more often than to doctrine, and this checklist is built around that fact. It runs twelve phases: verify the filing…
- Filing a Section 337 Complaint for Trademark or Trade Dress Infringement: A Practitioner's Guide · Guide — This guide is the operational half of the Marksy article on Section 337, and it assumes you know why an exclusion order reaches goods rather than people. It…
- Small Claims for Copyright: What the Copyright Claims Board Actually Does · Article — For most of copyright's history the enforcement system had a floor: below roughly fifty thousand dollars in exposure, a claim was not worth bringing, because…
- Plant and Agricultural IP Toolkit: Varieties, Seeds, Traits, and Grower Contracts · Toolkit — Plant and agricultural intellectual property runs on three protection regimes that overlap awkwardly and were built at different times for different purposes.…
- Valuing and Monetizing a Trademark Portfolio: A Practitioner's Guide to Royalty Benchmarks, Licensing Revenue, and Brand Collateral · Guide — This guide is the operational half of the Marksy article on trademark valuation, and it assumes you know the three approaches and why relief from royalty does…
- Toy and Juvenile Product IP Checklist: Clearance, Design Filings, Licence Terms, Safety and Advertising Review, and Enforcement · Checklist — This checklist runs a toy or juvenile product line against the calendar, because in this industry the deadlines are set by trade fairs and street dates rather…
- What the Claim Means: Markman Hearings, Intrinsic Evidence, and the Fight That Decides the Case · Article — Most patent cases are decided at claim construction rather than at trial. A single word construed one way produces infringement and construed another way…
- Patent Fundamentals Toolkit: Eligibility, Novelty, Obviousness, and Disclosure · Toolkit — Four questions decide whether an invention can be patented and how broadly, and every later dispute is a rerun of one of them. This toolkit maps eligibility,…
- Nonprofit and Membership Organisation IP Toolkit: Marks, Chapters, Volunteers, and Donors · Toolkit — A nonprofit's name is frequently its only appreciating asset, and it is the asset most often held without a filing, licensed without a document, and defended…
- Choosing a Strong Trademark: The Distinctiveness Spectrum · Article — Every trademark sits somewhere on a five-rung spectrum that runs from fanciful through arbitrary, suggestive, and descriptive to generic, and the rung it…
- Deciding It Privately: Arbitration, Mediation, and the IP Disputes That Never Reach a Courtroom · Article — Most intellectual property disputes with a contract at their centre end privately, and the choice to arbitrate is usually made years earlier by whoever drafted…
- Filing or Defending an Inter Partes Review: A Practitioner's Guide to Petitions, Institution, and Estoppel · Guide — This guide runs an inter partes review from the day the complaint is served to the final written decision and its consequences, from both chairs. It covers the…
- Patent Litigation Toolkit: From Complaint to Judgment in Federal Court · Toolkit — A patent case is decided by a small number of events, and everything between them is expense. This toolkit runs a case from the complaint to the appeal, and…
- Marketplace and Platform Liability Toolkit: Intermediaries, Sellers, and Accounts · Toolkit — Platforms sit between every brand and every infringer, and the law governing them is a patchwork of two safe harbors, one common law doctrine, and a great deal…
- Copyright Infringement Complaint Checklist: Registration, Elements, Venue, and Remedies · Checklist — This is the working checklist for taking a copyright infringement matter from the intake call to a filed, served, and defensible complaint in federal district…
- Patent Case Assessment Checklist: Standing, Venue, Prior Art, Exposure, and Budget · Checklist — The first ninety days of a patent case decide most of what follows, and almost all of the decisive work is cheap. This checklist runs the assessment in nine…
- Biometric and Sensitive Data Toolkit: Consent, Retention, and Litigation Exposure · Toolkit — Biometric privacy is the rare area where a technical foul carries damages large enough to end a company, and the foul is usually a missing piece of paper. This…
- Software, Data, and Open Source Toolkit: Code, Licenses, and the Supply Chain · Toolkit — Every software product is assembled from code somebody else wrote under terms nobody read, sits on data whose ownership is unclear, and depends on a supply…
- Managing IP in an Additive Manufacturing Programme: A Practitioner's Guide to CAD Ownership, Print Bureaus, Spare Parts, and Enforcement · Guide — This guide sets out how to build and run the legal side of an additive manufacturing programme, from the first contractor engagement to the enforcement letter.…
- Trademark Maintenance and Survival Toolkit: Use, Abandonment, Renewal, and Audits · Toolkit — This toolkit assembles everything in the Marksy corpus that keeps a federal trademark registration alive after the certificate issues, and explains how the…
- Your Face as Data: Biometric Privacy Statutes and the Written Consent Requirement · Article — Biometric privacy is the rare area of privacy law where a technical foul carries damages large enough to end a company, and the foul is usually a missing piece…
- Additive Manufacturing and 3D Printing IP Toolkit: Files, Parts, Bureaus, and Enforcement · Toolkit — Additive manufacturing splits a physical product into a file and a machine, and intellectual property law was built for a world in which those were the same…
- Connected Vehicle IP and Data Checklist: Data Rights, Supplier Terms, Feature Licensing, Telematics Privacy, and Aftermarket Access · Checklist — This checklist builds a connected vehicle IP and data position in the order that makes the later steps possible. Phase one splits vehicle data into diagnostic,…
- Brand Name Approval Toolkit: FDA, Financial Services, and Pre-Clearance Regimes · Toolkit — In several industries a brand name must be approved by someone other than the trademark office, and a name that clears the register can still be unusable. This…
- WIPO Office Actions and Provisional Refusals · Article — A provisional refusal is not a rejection — it is a national office action wearing a treaty envelope, and the single most expensive misunderstanding in…
- UDRP vs. Lawsuit: Recovering an Infringing Domain · Article — Someone has your brand in a domain name and you want it back, which means choosing between a contract-based administrative proceeding that ends in about two…
- UDRP Complaint — Template · Form — This is a complete, filing-ready UDRP complaint with every variable bracketed, organized around the three elements a complainant must prove under Paragraph…
- UDRP Complaint Checklist · Checklist — A phased, filing-ready checklist for assembling and submitting a complaint under ICANN's Uniform Domain Name Dispute Resolution Policy. It covers the threshold…
- TTAB Opposition Filing Checklist · Checklist — A notice of opposition is a federal complaint on a thirty-day fuse, and most of what goes wrong with one goes wrong before a word of the pleading is drafted.…
- Understanding TTAB Discovery and the Protective Order · Article — Discovery in a Trademark Trial and Appeal Board opposition or cancellation looks like federal civil discovery but runs on its own rules, its own calendar, and…
- Trademark Watch Services: What to Monitor · Guide — A trademark watch is a subscription that turns into a deadline, and most owners buy the wrong one, read it badly, and discover the problem on day 31. This…
- Request for Extension of Time to File a Statement of Use — Template · Form — This template supplies a complete, filable request for a six-month extension of time to file a statement of use in a Section 1(b) intent-to-use application,…
- Section 8 Declaration — Template · Form — A complete model Declaration of Continued Use under Section 8 of the Trademark Act, 15 U.S.C. § 1058, drafted as the instrument it actually is — a sworn…
- Section 8 & 9 Renewal Checklist · Checklist — A federal trademark registration can last forever and dies on a schedule: it survives only if the owner files a sworn declaration of continued use between the…
- Section 15 Incontestability: When and How to File · Guide — After five consecutive years of continuous use following registration, the owner of a mark on the Principal Register can file a declaration under Section 15 of…
- Responding to a Cease-and-Desist Letter · Guide — A cease-and-desist letter is an offer of free information disguised as a threat, and this guide is the working manual for taking the information without taking…
- Responding to a UDRP Complaint · Guide — You have been named as the respondent in a UDRP proceeding and you have twenty days to save a domain name you believe is legitimately yours. This guide is the…
- How to Overcome a Descriptiveness §2(e)(1) Refusal · Guide — This guide is the working manual for answering a Lanham Act Section 2(e)(1) refusal — the examining attorney's conclusion that your mark is merely descriptive…
- Responding to a §2(d) Likelihood-of-Confusion Refusal · Guide — A Section 2(d) refusal cites a conflicting registration and says your mark cannot coexist with it; this guide is the practitioner's walkthrough for proving…
- Trademark Renewal Deadlines Explained · Article — A federal trademark registration is not permanent and it does not renew itself; it survives only if the owner files sworn paperwork on a schedule fixed by…
- Trademark Infringement: Proving Likelihood of Confusion · Article — Trademark infringement turns on one question - whether an appreciable number of ordinary consumers are likely to be confused about who is behind the goods -…
- Pre-Litigation Enforcement Checklist · Checklist — Before you sue, work through this enforcement checklist to strengthen your position — eleven phases that take a trademark matter from the day somebody forwards…
- Pre-Filing Trademark Application Checklist · Checklist — This checklist is the last gate before you submit a United States trademark application: twelve phases of verification, each item written as an action you can…
- Trademark Portfolio Inventory — Template · Form — This is a complete model trademark portfolio inventory — a register, not an agreement — that records every mark a company owns, the serial or registration…
- Filing a Petition for Cancellation · Guide — This is the working manual for killing a federal registration that should never have issued or that has stopped being valid, from the morning the refusal…
- TTAB Proceedings: Opposition vs. Cancellation · Article — Oppositions and cancellations are the same tribunal, the same rules, and largely the same grounds — separated by one event: registration. This article explains…
- Response to Office Action — Template · Form — This template supplies a complete, filable response to a non-final USPTO trademark office action, drafted as the captioned instrument an examining attorney…
- Office Action Response Checklist · Checklist — This checklist is the mark-agnostic procedural sequence for producing a complete, on-time, correctly signed response to any USPTO trademark office action, in…
- Notice of Opposition — Template · Form — This template supplies a complete, filing-ready TTAB notice of opposition with every variable bracketed, plus the reasoning behind each paragraph and the…
- Filing an International Trademark via the Madrid Protocol · Guide — A field-by-field walkthrough of an international trademark filing under the Madrid Protocol, from the moment you pull the basic U.S. filing to the day the last…
- Madrid Protocol Application Checklist · Checklist — A phase-by-phase working checklist for assembling and filing a Madrid Protocol international application through the USPTO, built around the fact that nobody…
- Trademark License Agreement — Template · Form — A complete model trademark license agreement, ready to adapt, with every variable set out as a bracketed placeholder and every clause explained. The template…
- The Madrid Protocol: How International Registration Works · Article — The Madrid Protocol lets a U.S. brand owner file one application, in one language, paying one bill in Swiss francs, and reach more than a hundred countries —…
- Filing a Section 8 Declaration of Continued Use · Guide — Between the fifth and sixth anniversaries of registration, and again in the year before every tenth anniversary, the owner of a federal trademark registration…
- Filing a UDRP Complaint to Recover a Domain · Guide — This guide walks a trademark owner through recovering a squatted or infringing domain name under ICANN's Uniform Domain Name Dispute Resolution Policy, from…