McCarthy on Trademarks and Unfair Competition

Reviewed by Jean Maneke

Lawyers who work in the area of intellectual property law find they wake up every morning in a brand-new world. For them, planning ahead can mean having resources in the office that will allow them to quickly research areas of the law that yesterday they had no need for proficiency in, but that today they must be experts in for their clients.

There are many treatises on intellectual property issues. One of the most thorough, and therefore one that is on every intellectual property lawyer’s list of standards, is McCarthy on Trademarks and Unfair Competition (fourth edition, $2,503, Thomson West). It is nearing its 25th anniversary as a publication, and its reputation is well-earned owing to the thoroughness with which it presents its subject.

As one of the pioneers in this area of the law, J. Thomas McCarthy brings to his treatise a profound background in this field and a strong recognition in the industry. He is a senior professor at the University of San Francisco School of Law and the founding director of the school’s McCarthy Institute for Intellectual Property and Technology Law. His accolades would extend beyond the length permitted for this book review. Suffice it to say he is internationally recognized as one of the foremost experts in this field.

To those who toil in the intellectual property fields on a daily basis, this series doesn’t read like it was written for academics by a professor. And this series is helpful not only for practitioners experienced in this area, but it is the place a lawyer dipping a toe into the waters of this field of law should start his or her research when grappling with a difficult trademark or unfair competition issue.

The books cover fundamentals of trademark and unfair competition, including a chapter on the historical basis of trademark rights. An entire chapter is devoted to comparing trademarks to copyrights and patents (this chapter is especially helpful if the reader is not well versed in this field).

The book contains an extensive discussion of trade dress issues, which in today’s market are just as important to the practitioner as registered trademarks. A section on literary and artistic rights offers an important discussion for those whose practice veers more into the entertainment law area. Other sections discuss the pitfalls of generic trademarks versus distinctive marks and bringing generic names to trademark status. This chapter offers particularly important information for the corporate practitioner whose clients may come in with marks they have been using that are not well formed as having distinctive characteristics suitable for registration, but which need protection.

Several chapters discuss federal registration, pointing out potential pitfalls and guiding the practitioner through issues that can arise in that process. Another chapter deals with the process of opposing marks, as when a client’s mark is threatened by the proposed registration of another party.

No treatise in this area would be complete without sections relating to trademark infringement and the resulting litigation process, and one entire volume of the series relates to this issue, in addition to chapters in other volumes that can be helpful in this area, such as the chapter devoted to the Lanham Act and false advertising, the chapter on remedies, and the chapter on procedure in trademark litigation. An all-important checklist is included.

Of course, another chapter addresses defenses to such claims, presenting practitioners on the other side of the litigation an important resource. And as an example of the breadth of this treatise, another chapter focuses on rights of publicity, which is not a tort usually covered in books on trademark but which clearly has implications in handling some claims for trademark infringement.

The current (fourth) edition of this treatise includes the 1996 Federal Anti-Dilution law. The preface indicates that an electronic CD-ROM version of the books will be forthcoming, which will eventually make searching for information easier but still won’t replace the ability of practitioners to pull one of these volumes, sit down with a cup of coffee, and lose themselves in the thought process of planning ahead for clients’ future opportunities to exploit their trademarks.

Is this set of books worth $2,500? One must, of course, weigh the cost against the necessities of paying rent and utilities. But it doesn’t take many billable hours in this area of the law of the law for these books to pay for themselves. For example, I can see two chapters I wish I’d had at my fingertips only a few months ago. Once a practitioner has these volumes on-site, I suspect they’ll become a first-line resource on a regular basis.

Jean Maneke, of the Maneke Law Group, L.C., in Kansas City, Missouri, has practiced in the area of media and entertainment law for 20 years and counsels authors, newspaper and book publishers, film producers, recording artists, advertising and marketing agencies, photographers, and broadcasters. She may be reached at .

Copyright 2008

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