UPDATE: PLI has provided a 20% discount for Kane on Trademark Law for readers of my blog. Just use this link: www.pli.edu/WellsTrademark
I work in several areas of law—copyright, social media, technology agreements, advertising and promotions—but at the moment, I spend the largest part of my day working on trademark matters. If you’re familiar with trademark law, you know that the leading work in the field, cited by hundreds of court decisions, is J. Thomas Mc Carthy’s treatise, McCarthy on Trademarks and Unfair Competition. Coming in at seven volumes—and growing, and with a front matter and Table of Contents that stretches 154 pages, McCarthy can be… unwieldy. The $ 4,500 price tag may also be a concern for many smaller firms or lawyers who don’t spend all day handling trademarks. Still, it is the resource everyone quotes.
So when PLI offered to send me a review copy of Kane on Trademark Law by Siegrun D. Kane, I was curious to see how it compared.
The short answer: For most lawyers and in-house counsel, Kane’s book is the better choice.
Don’t get me wrong. If you’re litigating trademark cases in federal court, you’ll probably like having McCarthy around. But most of us don’t do that. Kane on Trademark Law, now in its Sixth Edition, seems committed to remaining a one-volume work. That choice is emblematic of its usefulness. Everything you’re likely to need to know about trademarks is in your hand. Kane is subtitled A Practitioner’s Guide. Not a Judge’s Guide, or a Professor’s Guide, or even a Litigator’s Guide.
The Kane text is well organized, well footnoted, and well written, with headings that make it easy to find the topic you need. (It also has a 60-page index.) There are sections on false advertising, litigation, Internet infringements, licensing, and dilution, in addition to the sections you’d expect to find on clearing marks for registration, prosecution procedures, and proceedings before the Trademark Trial and Appeal Board.
Kane also comes with a CD-ROM that contains the entire text of the volume in searchable, linked PDF files, carefully formatted to match the printed book. I’ve found this to be tremendously useful.
As an example of the different approach of Kane and McCarthy, consider the key trademark issue of likelihood of confusion between trademarks. Kane has 35 pages on the topic, plus another 20 focused on counterfeiting. McCarthy devotes Volume 3 to the topic—800 or so pages—plus innumerable related sections that appear in other volumes (See, e.g., Chapter 31, Volume 6, Defenses to Infringement). Or consider the sections on Inter Partes TTAB proceedings. Kane has 54 pages of succinct text on topics that include procedures, grounds, defenses, burden of proof, and review routes for TTAB decisions. McCarthy devotes… well, you get the idea.
I love McCarthy, but I keep using Kane because most of the time, I don’t have the time to use McCarthy. And my clients don’t have the money. Kane reminds me of the points I need to know. It references the statutory sections and leading cases. It summarizes and recommends practice steps without as much scholarly background. Most days, it’s just the better tool for what I need.
I think that’s also true for those, like in-house counsel, who are dealing with trademarks, social media, advertising, employment, real estate leases, contract disputes… and that’s just before lunch. Kane on Trademarks will serve in-house counsel by providing guidance on most trademark issues that they are likely to face. They’ll hire litigators to take trademark cases to the Federal Circuit and they will use McCarthy.
Kane does miss some areas that I wish it included. There appears to be nothing about ex parte appeals at the Trademark Trial and Appeal Board. Perhaps it’s not a critical topic for most readers, but I’d like to see more on it. There is a little about using the Madrid Protocol, but virtually nothing about international trademark protection. This is clearly a book about U.S. law, but given its apparent target audience, at least a brief section on how international trademarks operate with some strategy pointers and references would be appropriate. Finally, there isn’t much about the procedures for handling disputes. True, those procedures are based on the TTAB manual and the Federal Rules of Civil Procedure. But guidance in a book like this goes a long way to help those not familiar with the rules.
Despite a few minor weaknesses, Kane on Trademarks seems to spend a lot of time on the corner of my desk.