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J. Thomas McCarthy

Senior Professor and Founding Director of the McCarthy Institute for Intellectual Property and Technology Law

Senior Professor J. Thomas McCarthy is the founding director of USF's McCarthy Institute for Intellectual Property and Technology Law, which is named in his honor. He taught at USF for 36 years. Although he no longer teaches courses, he remains involved in the institute and continues his scholarly activities. He was the recipient of the 2003 President's Award of the International Trademark Association, the 2000 Pattishall Medal for excellence in teaching trademark law from the Brand Names Education Foundation, the 1997 Ladas Professional Author Award from the Brand Names Education Foundation, the 1997 Centennial Award in Trademark Law from the American Intellectual Property Law Association, the 1994 Jefferson Medal from the New Jersey Intellectual Property Law Association, the 1979 Rossman Award of the Patent and Trademark Office Society, and the 1965 Watson Award of the American Intellectual Property Law Association. The American Intellectual Property Lawyers Association named McCarthy the most influential trademark expert of the 20th century.

Education
  • BS, University of Detroit
  • JD, University of Michigan
    Awards
    • Intellectual Property Hall of Fame, Intellectual Asset Management magazine (2012)
    • Distinguished Service Award, McCarthy Institute for Intellectual Property and Technology Law (2011)
    • President's Award, International Trademark Association (2003)
    • Pattishall Medal, Brand Names Education Foundation (2000)
    • Ladas Professional Author Award, Brand Names Education Foundation (1997)
    • Distinguished Professor Award, USF School of Law (1971, 1982, 1991, 1997)
    TitleOutletsDate
    "World Trademark Review’s 50 market sharpers"World Trademark Review07/07/14
    "Defying Doubters, Coach IP Enforcement Takes No Prisoners"Law36007/29/13
    "Author of 'McCarthy on Trademarks and Unfair Competition' Celebrates 40 Years with Thomson Reuters"Thomson Reuters04/25/13
    "The McCarthy Interview"Thomas Reuters Westlaw11/15/12
    "Author Profile - J. Thomas McCarthy"Westlaw Key Authors ePublished09/05/12
    "Magnalight Responds to Mag Instrument’s Lawsuit"Virtual-Strategy Magazine06/12/12
    "Kohler Co. Steamed Over Arizona Firm's Name"Milwaukee Journal Sentinel01/24/12
    "Fowl Language: Companies Squawk About Who Gets 'Tweet'"Wall Street Journal09/24/11
    "Keyword Competition Not Illegal"Daily Journal03/10/11
    "The Rise and Fall of Design Within Reach"Fast Company12/01/09
    The Scariest Monster of All Sues for Trademark InfringementWall Street Journal04/04/09
    Books
    • McCarthy on Trademarks and Unfair Competition (Eagan, Minn.: West/Clark Boardman Callaghan, First-Fourth Editions 1996-2012). (Seven-volume treatise cited as an authority in more than 3,000 judicial decisions.)
    • The Rights of Publicity and Privacy (Thomas Reuters, 2d, 2013 Edition 2013).
    • McCarthy’s Desk Encyclopedia of Intellectual Property (BNA, Third Edition 2004). (With R. Schechter & D. Franklyn)
    • Federal Antitrust Laws: Cases, Text, and Commentary (West Pub. Co.: Eagan, Minn., Fourth Edition 1981). (The book was co-authored and appeared in the American Casebook series.)
    • Domestic and International Licensing of Technology (Practicing Law Institute, 1980). (The book was co-authored and number 126 in the Patents, Copyrights, Trademarks and Literary Property Course Handbook series.)
    • Current Trends in Domestic and International Licensing of Technology (Practising Law Institute, 1979). (Co-author, Patents, Copyrights, Trademarks, and Literary Property Course Handbook series; no. 112)
    Law Review and Journal Articles
    • "Are Preliminary Injunctions Against Trademark Infringement Getting Harder to Achieve?" Intellectual Property Law Bulletin (2009).
    • "Proving a Trademark Has Been Diluted: Theories or Facts?" 41 Houston Law Review  713 (2004). SSRN
    • "Dilution of a Trademark: European and United States Law Compared," 94 Trademark Reporter 1163 (2004). SSRN
    • "Protection of the Athlete’s Identity: The Right of Publicity, Endorsements and Domain Names," 11 Marquette Sports Law Review 1959 (2001). ((Co-author))
    • "Trademarks, Cybersquatters and Domain Names," 10 DePaul-LCA Journal of Art & Entertainment Law 227 (2000).
    • "The 1996 Federal Anti-Dilution Statute," 16 Cardozo Arts and Entertainment Law Journal 587 (1998).
    • "Domain Names and Trademarks," 9 Australian Intellectual Property Law Journal  49 (1998).
    • "The 1996 U.S. Federal Anti-Dilution Statute," 9 Australian Intellectual Property Law Journal  38 (1998).
    • "Current Commentary on the Federal Trademark Dilution Act," 87 Trademark Reporter 490 (1997). (Includes responses and replies.)
    • "The Lanham Act Section 43(A): The Sleeping Giant Is Now Wide Awake," 59 Law and Contemporary Problems 45 (1996).
    • "Intellectual Property—America's Overlooked Export," 20 University of Dayton Law Review 809 (1995). (The article was reprinted in 28 Intellectual Property Law Review 315 in 1996)
    • "The Human Persona As Commercial Property: The Right of Publicity," 19 Columbia-VLA Journal of Law & Arts 129 (1995). (The Spring 1995 Horace S. Manges Lecture, Columbia University School of Law, March 9, 1995)
    • "High-Tech Trademarks: Selection and Use," 21 AIPLA Quarterly Journal 265 (1993). (Co-authored with Christopher M. Pickett.)
    Book Contributions
      Opinion Pieces and Blog Posts
        Other Publications
        • J. Thomas McCarthy on Trademark Law for Business Lawyers: Program Material, October/November 1978. (Berkeley, California Continuing Education of the Bar, 1978)
        Briefs
          Court Citation of Research
          • United States Supreme Court, Already, LLC v. Nike, Inc., WL 85300 2013). (McCarthy's treatise, McCarthy on Trademarks and Unfair Competition was cited as an authority. This is the 10th time the Supreme Court has cited McCarthy's treatise.)
          Presentations
          • Presenter, "The IP Year in Review: Patent Law,Trademark Law and Right of Publicity, and Copyright Law," University of Southern California Gould School of Law Intellectual Property Institute, "Illuminating IP Trends," Beverly Hills, Calif. (March 2013). (Co-presented with Mark A. Lemley and David Nimmer.)
          • Panelist, "It's Entertainment! — How The Right of Publicity is Entertaining the Entertainment Industry," USF McCarthy Institute, Microsoft Corporation and Fox Entertainment Group Symposium, "Trademark Law and Its Challenges," Los Angeles, Calif. (February 2013). (Co-presented with Jeremy Williams, Stacey Byrnes, and Mei-lan Stark.)
          • Presenter, "The Flavors of Trademark Functionality," University of San Francisco School of Law McCarthy Institute and Microsoft Corporation Symposium, "Trademark Law and Its Challenges," New York, N.Y. (February 2012).
          • Panelist, "IP Hot Topics and Burning Issues," International Trademark Association Advanced Trademark Symposium, Washington, D.C. (September 2011).
          • Moderator, "100th Anniversary of The Trademark Reporter," International Trademark Association Annual Meeting, San Francisco, Calif. (May 2011).
          • Panelist, "Effective Methods of Teaching Intellectual Property Law," International Trademark Association Annual Meeting, San Francisco, Calif. (May 2011).
          • Presenter, "An IP Year in Review," University of Southern California Gould School of Law 2011 Intellectual Property Institute "Navigate the Maze," Beverly Hills, Calif. (March 2011).
          • Presenter, "When Should Trademark Owners Threaten Suit," McCarthy Institute for Intellectual Property and Technology Law and Microsoft Corporation Symposium "Trademark Law and its Challenges in 2011," Redmond, Wash. (February 2011).
          • Moderator, "Recent Cases on the Right to Publicity and the First Amendment," Copyright Society of Northern California, San Francisco, Calif. (January 2011).
          • Panelist, UC Berkeley School of Law Center for Law & Technology, 10th Annual Intellectual Scholars Conference, Berkeley, Calif. (August 2010).
          • Presenter, "Trademark Law for Federal Judges," Federal Judicial Center Intellectual Property Seminar at UC Berkeley, Berkeley (May 2010).
          • Panelist, "An IP Year in Review: Patent Law, Trademark Law and Right of Publicity, and Copyright Law," University of Southern California Gould School of Law 2010 Intellectual Property Institute, Beverly Hills (March 2010).
          • Presenter, "Recent Developments in Trademark Law," Thomson-Reuters-West Publishing Company Seminar, San Diego, Calif. (August 2009).
          • Presenter, "Trademark Law Needs New Defenses," University of San Francisco Symposium "The Brand as Property: Trademark Law and its Challenges in the New Era," (November 2009). (McCarthy also delivered the keynote address at the symposium.)
          • Presenter, "Trademark Law for Federal Judges," Federal Judicial Center Intellectual Property Seminar at UC Berkeley, Berkeley (May 2009).
          • Panelist, "An IP Year in Review: Patent Law, Trademark Law and Right of Publicity, and Copyright Law," University of Southern California Gould School of Law 2009 Intellectual Property Institute, Beverly Hills (March 2009).
          • Presenter, "United States Trademark Anti-Dilution Law," The Institute of Brand and Innovation Law conference "Trademark Infringement without Confusion - Dilution", University of London, London, England (February 2009).
          • Presenter, "Trademark Law for Federal Judges," Federal Judicial Center Intellectual Property Seminar at UC Berkeley, Berkeley (May 2008).
          Testimony and Hearings
            Written Testimony and Commentary
              Advisor or Consultant
                Counsel
                  Symposia Organization
                    Professional Membership
                      Fellowships
                        Other Service