Professor J. Thomas McCarthy’s premier treatise on trademark and unfair competition law has been cited once again by the U.S. Supreme Court in the recent ruling in Already, LLC v. Nike, Inc., — S.Ct. —, 2013 WL 85300, *10 (2013).

This case started when Nike filed suit, alleging that two of Already’s athletic shoes violated Nike’s “Air Force 1” trademark. Already denied the allegations and filed a counterclaim challenging the validity of Nike’s “Air Force 1” trademark. While the suit was pending, Nike issued a “Covenant Not to Sue,” promising not to raise any trademark or unfair competition claims against Already or any affiliated entity based on Already’s existing footwear designs, or any future Already designs that constituted a “colorable imitation” of Already’s current products. The District Court then dismissed Already’s counterclaim, concluding that there was no longer a justifiable controversy, and the Second Circuit affirmed. After further review, the Supreme Court likewise held that the case be properly dismissed.

In rejecting the appellant’s policy argument (that dismissing this case allows Nike to bully small innovators), Chief Justice Roberts, writing for the Court, noted that “granting covenants not to sue may be a risky long-term strategy for a trademark holder” citing 3 J. McCarthy, Trademarks & Unfair Competition § 18:48, p. 18–112 (4th ed. 2012).

McCarthy on Trademarks & Unfair Competition is celebrating its 40th year in print in 2013, and, since the publication of the first edition in 1973, the U.S. Supreme Court has cited it as authority in 10 decisions. Additionally, the federal courts across every Circuit have cited it in more than 3,000 rulings during that time.

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