Ordinary people, as well as businesses and entrepreneurs, use other people’s trademarks all the time – legally. But perceptions are skewed by continual emphasis on the power of intellectual property rights owners to exclude, rather than on people’s rights to use another’s trademarks. But clients ask lawyers every day: “Can I use this mark in this way?” Professor McCarthy will discuss the various ways that those other than the trademark owner can make proper and legal use of another’s marks. This involves looking at categories like non-confusing uses, fair uses and uses which do not dilute a famous mark.
J. Thomas McCarthy is a Senior Professor at the University of San Francisco School of Law, where he has been on the faculty for over forty years. He is the Founding Director of the McCarthy Institute of Intellectual Property and Technology Law.
Professor McCarthy is the author of the seven-volume treatise "Trademarks and Unfair Competition," published by Thomson-West. This book is in its Fourth Edition and has been in print for almost thirty five years. This treatise has been cited as authority in over 2500 judicial decisions. He isalso the author of the two volume treatise, "The Rights of Publicity and Privacy," and the reference book, "McCarthy's Desk Encyclopedia of Intellectual Property."
His most recent articles are: Dilution of a trademark: European and United States law compared, 94 Trademark Reporter 1163 (November-December 2004) andProving a Trademark Has Been Diluted: Theories or Facts? 41 Houston Law Review 713 (2004).
He received the 2003 President’s Award from the International Trademark Association; the 2000 Pattishall Medal for excellence in teaching trademark law from the Brand Names Education Foundation and the Centennial Award in Trademark Law from the American Intellectual Property Law Associationin 1997.
He is a consultant “of counsel” with Morrison & Foerster in San Francisco. He is an avid watercolor painter, winning prizes at the Contra Costa County fair for several years.