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Trademarks and Unfair Competition: Law and Policy, Seventh Edition

Authors
  • Graeme B. Dinwoodie
  • Mark D. Janis
  • Mark P. McKenna
Series / Aspen Casebook Series
Description
Table of contents
Preface

Buy a new version of this textbook and receive access to the Connected eBook on Casebook Connect, including academic lifetime access to the online ebook with highlight, annotation, and search capabilities. Access also includes an outline tool and other helpful resources. Connected eBooks provide what you need most to be successful in your law school classes.

In the new edition of this leading casebook on trademarks and unfair competition, Graeme B. Dinwoodie and Mark D. Janis are joined by Mark P. McKenna of UCLA. The addition of McKenna, a renowned teacher and scholar who has used the casebook for two decades, ensures that the casebook continues to present the subject in a clear, accessible, and up-to-date fashion while tackling difficult questions in a sophisticated manner.

The many strands of trademark and unfair competition doctrine are organized into a coherent conceptual framework consisting of a brief examination of foundational concepts, followed by thorough treatments of the law on (1) the creation of trademark rights; and (2) the scope and enforcement of trademark rights and some related causes of action. The traditional case-and-note format is enhanced by problems that help students understand intricate key topics.

New to the 7th Edition: 

  • Incorporates prominent new Supreme Court decisions, including the Jack Daniel’s case on expressive use of marks, the Elster case on the concordance of registration bars with the dictates of the First Amendment, and the Abitron case revising the Court’s view on extra-territorial application of the Lanham Act 
  • Introduces useful new cases illustrating fundamental principles 
  • Augments prior treatment of emerging doctrine of “failure to function” and addresses the conceptual location of that doctrine within a conventional trademark law framework 
  • Deepens coverage of trade dress (including the Timberlane boot and Watermelon wedge opinions) 
  • Probes new developments in online marketing, including recent appellate cases seeking to bring together two decades of jurisprudence on keyword advertising 
  • Up to date with pending challenges to contested developments, such as efforts to rein in broad merchandising claims 
  • Refines treatment of defenses, including the Rogers rule on expressive use post-Jack Daniel’s and new appellate decisions on descriptive and nominative fair use 
  • Includes material on new remedial mechanisms, such as so-called “Schedule A “cases 

Professors and students will benefit from: 

  • Coherent conceptual framework clearly delineating creation of rights and enforcement of rights issues 
  • Traditional case-and-note format, enhanced by problems that help students understand intricate key topics 
  • Thorough coverage of trademark issues arising in online commerce 
  • Integrated coverage of international and domestic doctrine 
  • Comprehensive treatment of trade dress protection
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Table of contents

SUMMARY OF CONTENTS

Contents 
Preface to Seventh Edition 
Preface to First Edition 


Part I Foundations and Purposes of Trademark and Unfair
Competition Law 
Chapter 1 Introduction to Trademark and Unfair Competition Law 
Part II Creation of Trademark Rights 
Chapter 2 Distinctiveness 
Chapter 3 Functionality 
Chapter 4 Use 
Chapter 5 Registration 
Part III Scope and Enforcement of Trademark Rights 
Chapter 6 Geographic Limits on Trademark Rights 
Chapter 7 Confusion-Based Trademark Liability Theories 
Chapter 8 Non-Confusion-Based Trademark Liability Theories 
Chapter 9 Permissible Uses of Another’s Trademarks 
Chapter 10 False Advertising 
Chapter 11 Trade Identity Rights in One’s Persona: Endorsement,
Attribution, and Publicity 
Chapter 12 Remedies 


Table of Cases 
Index 

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About the authors
Graeme B. Dinwoodie
Professor
University of Oxford

Professor Dinwoodie is a prolific intellectual property scholar of international renown. From 2009 to 2018, he was Professor of Intellectual Property and Information Technology Law at the University of Oxford, where he was also Director of the Oxford Intellectual Property Research Centre and a Professorial Fellow of St. Peter’s College. Immediately prior to taking up the IP Chair at Oxford, Professor Dinwoodie was for several years a Professor of Law at Chicago-Kent College of Law, where he led the Program in Intellectual Property Law. From 2005 to 2009, he also held a Chair in Intellectual Property Law at Queen Mary College, University of London. Professor Dinwoodie rejoined the Chicago-Kent faculty in 2016 as a University Professor, an appointment reserved for 'highly distinguished faculty who may be appointed by the President [of Illinois Institute of Technology] in recognition of their national reputations.' And in 2018, he returned full-time to Chicago-Kent upon his appointment as Global Professor of Intellectual Property Law. He remains a Visiting Professor of Law at the University of Oxford.

Professor Dinwoodie is the author of many books and casebooks; dozens of articles, book chapters and other substantial works; and numerous essays and shorter works. His scholarship is widely cited by scholars in the United States and abroad. He received the 2008 Ladas Memorial Award from the International Trademark Association for his article Confusion Over Use: Contextualism in Trademark Law (with M. Janis). He is considered a leading international authority in trademark law, design law, and international intellectual property law, and is regularly invited to speak at numerous conferences and institutions around the world. Professor Dinwoodie has held a number of visiting or honorary positions, including as the Yong Shook Lin Visiting Professor of Intellectual Property Law at the National University of Singapore, a Global Professor of Law at New York University School of Law, an Honorary Professor of Law at the University of Strasbourg, the George P. Smith II Distinguished Visiting Chair at Indiana University Maurer School of Law, and a visiting professor of law at the University of Pennsylvania School of Law. In 2008, Professor Dinwoodie received the Pattishall Medal for Teaching Excellence in the field of trademarks and trade identity law—awarded only once every four years—from the International Trademark Association. In 2020, Professor Dinwoodie was inducted into the IP Hall of Fame. Professor Dinwoodie holds an LL.B. degree in Private Law (First Class Honors) from the University of Glasgow, an LL.M. from Harvard Law School, and a J.S.D. from Columbia Law School. He was the Burton Fellow in residence at Columbia Law School for 1988-89, working in the field of intellectual property law, and a John F. Kennedy Scholar at Harvard Law School for 1987–88.

Mark D. Janis
Indiana University–Bloomington

Mark D. Janis teaches at Indiana University Maurer School of Law as a Robert A. Lucas Chair and Professor of Law and writes in the fields of patents, trademarks, unfair competition, and intellectual property antitrust. He has a particular interest in intellectual property rights in plants and plant biotechnology. He has published numerous law review articles and is co-author of a two-volume treatise, IP and Antitrust (with Hovenkamp and Lemley), a casebook, Trademarks & Unfair Competition: Law and Policy (with Dinwoodie), and several other books on trademark law. He is a 2000-2001 recipient of the University of Iowa Collegiate Teaching Award. He was named a University of Iowa Faculty Scholar for 2002-2006 to conduct research on intellectual property rights in plant biotechnology. In 2006, he was named the H. Blair & Joan V. White Intellectual Property Law Chair at the University of Iowa College of Law. He joined the faculty at the IU Maurer School of Law in 2009. Professor Janis earned his JD summa cum laude in 1989 from the Indiana University Maurer School of Law, and his BS with distinction in 1986 in Chemical Engineering from Purdue University. He is a registered patent attorney and a member of the Indiana bar. Prior to entering law teaching, Professor Janis practiced patent law with Barnes & Thornburg in Indianapolis, Indiana, from 1989-1995.

Mark P. McKenna
Notre Dame University

Mark P. McKenna teaches and writes in the area of intellectual property. Professor McKenna is widely recognized as a leading scholar in the trademark area, having published a number of articles in leading law journals on the topic of trademark law. He has also written about copyright law, the right of publicity, and the intersection of intellectual property rights regimes. Some of his latest projects deal with concerns about intergenerational equity in intellectual property and the role of the placebo effect in intellectual property policy.

Professor McKenna joined the Notre Dame Law School faculty on a permanent basis in the Fall of 2008 after visiting for a semester in the Spring of 2008. Prior to joining the faculty, Professor McKenna was a member of the faculty at Saint Louis University School of Law and practiced law with an intellectual property firm in Chicago, where he primarily litigated trademark and copyright cases. He graduated from the University of Notre Dame in 1997 with a degree in Economics and earned his J.D. from the University of Virginia School of Law in 2000.

In addition to various intellectual property courses, Professor McKenna teaches the first-year Torts class and has previously taught Civil Procedure.

Articles:

  • "A Consumer Decision-Making Model of Trademark Law," 97 Virginia Law Review (2011).

  • "Owning Mark(et)s," 109 Michigan Law Review 137 (2010) (with Mark A. Lemley).

  • "Irrelevant Confusion," 62 Stanford Law Review 413 (2010) (with Mark A. Lemley).

  • "Testing Modern Trademark Law's Theory of Harm," 95 Iowa Law Review 63 (2009).

  • "Trademark Use and the Problem of Source," 2009 University of Illinois Law Review 773 (2009).

  • "The Normative Foundations of Trademark Law," 82 Notre Dame Law Review 1839 (2007); reprinted at 97 Trademark Reporter 1126 (2007).

  • "The Right of Publicity and Autonomous Self-Definition," 67 University of Pittsburgh Law Review 225 (2005).

Product Information
Edition
Seventh Edition
Publication date
2026-06-29
Copyright Year
2026
Pages
1232
Print + eBook
9798894109664
eBook
9798894109688
LLPOD
9798894109701
Subject
Trademark Law , Intellectual Property
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