This Content Downloaded From 103.68.37.134 On Tue, 19 May 2020 06:04:30 UTC

University of California, Berkeley, School of Law
Trademark Territoriality in Cyberspace: An Internet Framework for Common-Law

Trademarks
Author(s): Shontavia Johnson
Source: Berkeley Technology Law Journal , Vol. 29, No. 2 (Fall 2014), pp. 1253-1300
Published by: University of California, Berkeley, School of Law
Stable URL: https://www.jstor.org/stable/10.2307/26377591
REFERENCES
Linked references are available on JSTOR for this article:
https://www.jstor.org/stable/10.2307/26377591?seq=1&cid=pdf-
reference#references_tab_contents
You may need to log in to JSTOR to access the linked references.
JSTOR is a not-for-profit service that helps scholars, researchers, and students discover, use, and build upon a wide
range of content in a trusted digital archive. We use information technology and tools to increase productivity and
facilitate new forms of scholarship. For more information about JSTOR, please contact support@jstor.org.
Your use of the JSTOR archive indicates your acceptance of the Terms & Conditions of Use, available at
https://about.jstor.org/terms
University of California, Berkeley, School of Law is collaborating with JSTOR to digitize, preserve
and extend access to Berkeley Technology Law Journal
This content downloaded from

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
All use subject to https://about.jstor.org/terms
Berkeley Technology Law Journal
Volume 29 | Issue 2 Article 5
1-12-2015
Trademark Territoriality in Cyberspace: an Internet

Framework for Common-Law Trademarks
Shontavia Johnson
Follow this and additional works at: http://scholarship.law.berkeley.edu/btlj
Recommended Citation
Shontavia Johnson, Trademark Territoriality in Cyberspace: an Internet Framework for Common-Law Trademarks, 29 Berkeley Tech.
L.J. (2015).
Available at: http://scholarship.law.berkeley.edu/btlj/vol29/iss2/5
Link to publisher version (DOI)

http://dx.doi.org/https://doi.org/10.15779/Z381Q40
This Article is brought to you for free and open access by the Law Journals and Related Materials at Berkeley Law Scholarship Repository. It has been
accepted for inclusion in Berkeley Technology Law Journal by an authorized administrator of Berkeley Law Scholarship Repository. For more
information, please contact jcera@law.berkeley.edu.

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
TRADEMARK TERRITORIALITY IN CYBERSPACE:
AN INTERNET FRAMEWORK FOR
COMMON-LAW TRADEMARKS
Shontavia Johnson †
ABSTRACT
The Internet has quickly become the next frontier for those seeking to take advantage
of free-market competition by doing business online. In addition to having products or
services to sell, an Internet presence has become critically important for businesses that want
to connect with consumers near and far. While most businesses use trademarks like words,
logos, slogans, and other designations to facilitate such consumer connections across the
geographically borderless Internet, many of these businesses have not availed themselves of
state or federal registration mechanisms for those trademarks. While unregistered
trademarks, also known as common-law trademarks, have historically been entitled to legal
protection in geographically delimited territorial zones, current trademark jurisprudence is
grounded in the physical world and provides scant guidance on the geographic extent of
common-law trademark protection in the Internet context. In addition, when such
unregistered trademarks inevitably collide with other similar, unregistered trademarks in
cyberspace, it is unclear whether the current law, grounded in the concurrent-use doctrine,
can survive in an Internet environment. This Article analyzes previous models for evaluating
unregistered trademarks used in the Internet context and proposes that these models are
insufficient to deal with the myriad issues raised in cyberspace. It provides an updated model
for establishing geographic rights through Internet use and offers a middle-ground approach
to concurrent Internet use of common-law trademarks.
© 2014 Shontavia Johnson.

† Assistant Professor of Law, Drake University Law School. The Author thanks
Edmund J. Sease and the faculty of Drake University Law School for helpful comments,
advice, and ideas on earlier versions of this Article. Thanks also to Madelyn Smith and
Nicholas Krob for excellent research and editorial assistance.

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
1254 BERKELEY TECHNOLOGY LAW JOURNAL [Vol. 29:1253
TABLE OF CONTENTS
I. INTRODUCTION.......................................................................................... 1254
II. A HISTORY OF TRADEMARK LAW AND THEORY .................... 1257
A. MARKETPLACE BASIS FOR ESTABLISHING COMMON-LAW
TRADEMARKS RIGHTS ........................................................................... 1258
1. The Zone of Actual Goodwill ........................................................... 1259
2. The Zone of Natural Expansion ..................................................... 1261
B. CONCURRENT USE AND THE TERRITORIAL LIMITS OF
COMMON-LAW TRADEMARKS.............................................................. 1263
1. The Creation of the Concurrent-Use Doctrine ................................... 1266
2. Federal Court Interpretations of the Concurrent-Use Doctrine
Post–Lanham Act ........................................................................... 1271
3. The Confluence of Common-Law Trademarks, the Concurrent-
Use Doctrine, and the Lanham Act ................................................. 1276
III. APPLYING TRADEMARK COMMON LAW PRINCIPLES
IN THE INTERNET ENVIRONMENT .............................................. 1278
A. DEFINING THE GEOGRAPHICAL SCOPE OF COMMON-LAW
TRADEMARK RIGHTS BASED ON INTERNET USE ............................ 1279
B. THE POSSIBILITY OF CONCURRENT USE ON THE INTERNET........ 1282
IV. AN INTERNET FRAMEWORK FOR COMMON-LAW
TRADEMARKS ................................................................................................ 1284
A. ESTABLISHING TERRITORIAL RIGHTS THROUGH INTERNET
USE: AN UPDATED MODEL .................................................................. 1284
B. A MIDDLE-GROUND APPROACH TO CONCURRENT USE ............... 1291
C. A PRAGMATIC EXAMPLE: COMMON-LAW TRADEMARK
PROTECTION AND CONCURRENT USE IN AN INTERNET
ENVIRONMENT ....................................................................................... 1297
V. CONCLUSION ................................................................................................ 1298
I. INTRODUCTION
An Internet presence has essentially become a requirement of doing
business for companies large and small. 1 In the fast-paced business world,
from startup companies and entrepreneurs to large international
conglomerates, a website or a page on Facebook, Twitter, or LinkedIn may
be the first public proof of a company’s existence. From the earliest stages of
1. See THOMAS ELLIOTT, WEBSITE 411: BUSINESS SURVIVAL IN AN INTERNET

ECONOMY 3 (2008).

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
2014] TRADEMARK TERRITORIALITY IN CYBERSPACE 1255
business, entities are increasingly more attuned to intellectual property

concerns but often perceive intellectual property protection as cost-
prohibitive. As a result, many of the trademarks created to sell and market
products on the Internet are used without state or federal registration.
Though unregistered, these trademarks, typically referred to as “common
law” trademarks, are still entitled to legal protection.2 Incredibly, however,
American trademark law has neither clearly articulated the scope of
protection for common-law trademarks used online nor provided sufficient
guidance for companies that find themselves in legal conflicts over the use of
such trademarks.
Consider, for example, two hypothetical companies: MidWest Clothing,
Incorporated (“MidWest”) and Southern Corporation (“Southern”).
MidWest has been selling various items of men’s and women’s clothing in its
Nebraska-based brick-and-mortar store, named SHINY FITS, since 2010.
Before opening its store, MidWest performed an Internet search and a basic
word mark search on the Trademark Electronic Search System (“TESS”) 3 for
the term SHINY FITS. Finding no other uses or registrations for SHINY
FITS, MidWest registered the domain name “www.shinyfits.com” in 2010
and put up a website for sales and marketing purposes. MidWest did not,
however, file a trademark application with the USPTO. Because of its
geographical location, MidWest originally drew customers throughout the
states of Nebraska, Iowa, Missouri, and Kansas. Once MidWest’s website
became popular in January of 2011, however, MidWest’s Internet sales
skyrocketed. Through its website, MidWest began fulfilling purchase orders
from customers residing in each of the fifty states.
Unbeknownst to MidWest, Southern has been using SHINY FITS as a
logo on one of its T-shirt lines since 2008. Southern sells its T-shirts in a
physical store located in South Carolina to local customers. It never occurred
to Southern’s owner to file a trademark registration for SHINY FITS. Since
2009, however, it has maintained a company website,
www.southernclothing.com, where consumers can view and purchase many
of its T-shirts—including SHINY FITS T-shirts. Most of the website’s
visitors are also based in South Carolina, but Southern occasionally fulfills a
purchase order from out of state. Southern’s owner learns of MidWest’s
website and sends MidWest a cease-and-desist letter alleging trademark
2. See 15 U.S.C. § 1125(a) (2012); Regina Nelson Eng, A Likelihood of Infringement: The
Purchase and Sale of Trademarks as Adwords, 18 ALB. L.J. SCI. & TECH. 493, 500 (2008).
3. The Trademark Electronic Search System is the registration database maintained by
the United States Patent and Trademark Office (“USPTO”). Trademark Electronic Search
System, USPTO, http://tmsearch.uspto.gov/ (last visited Mar. 19, 2014).

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
infringement. Southern contends that it has established nationwide rights in

SHINY FITS by virtue of the photos and marketing materials on its website.
Who should prevail in a trademark infringement lawsuit under this
increasingly common set of circumstances? Southern has probably
established trademark rights in South Carolina and MidWest has likely
established trademark rights in Nebraska, Iowa, Missouri, and Kansas. 4 A
question remains, however, regarding the extent of trademark rights in the
other forty-five states in the United States. The Internet’s vast reach could
necessitate the conclusion that trademark rights have been established in
other regions through actual sales or virtual connections with consumers in
those locations. In addition, even if trademark rights have been established in
physical states or regions through Internet use, courts have struggled with the
legal impact of such a conclusion.
If a business has established trademark rights through Internet use,
courts are hesitant to extend a monopoly over cyberspace, where consumers
from any of the fifty states can find either business. Federal courts have had
difficulty harmonizing the territorial and geographical constraints of
common-law trademarks with the borderless Internet and often provide only
cursory guidance. 5 The resulting decisions have primarily served to muddy
the waters for the ever-increasing numbers of entrepreneurs and businesses
seeking to do business online.
This Article addresses the aforementioned questions and begins to
reconcile the current state of trademark law on this issue. It provides a
comprehensive analysis of the historical underpinnings of common-law
trademarks, how such marks receive legal protection in the United States,
and how concurrently used, common-law trademarks coexist in the
traditional marketplace. In light of the Internet’s predominance in both sales,
marketing, and advertising, this Article then proposes a new way of assessing
both (1) the scope of protection for common-law trademarks used on the
Internet and (2) simultaneous use of such marks online by multiple entities.
In Part II, this Article examines the history and policies underlying
common-law trademarks. It then outlines the seminal Supreme Court cases
that created the concurrent-use doctrine, which served to draw territorial
boundaries around common-law trademarks. Finally, Part II addresses the
4. See discussion infra Section II.A.

5. See, e.g., Allard Enters., Inc. v. Advanced Programming Res., Inc., 249 F.3d 564 (6th
Cir. 2001); Optimal-Pets, Inc. v. Nutri-Vet, LLC, 877 F. Supp. 2d 953 (C.D. Cal. 2012); Pure
Imagination, Inc. v. Pure Imagination Studios, Inc., No. 03 C 6070, 2004 WL 2967446
(N.D. Ill. Nov. 15, 2004); Echo Drain v. Newsted, 307 F. Supp. 2d 1116 (C.D. Cal. 2003).

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
impact of the Lanham Trademark Protection Act of 1946 on the concurrent-

use doctrine and common-law trademarks.
In Part III, this Article summarizes the case law and scholarship
addressing common-law trademarks used on the Internet. In outlining the
competing approaches, Part III aligns the historical models of trademark
common law with twenty-first-century trademark issues, noting where gaps
exist.
Finally, Part IV analyzes previous models for assessing common-law
trademark use on the Internet and considers how they are ineffective in
crafting the scope of common-law trademark protection. First, in assessing
the scope of protection for common-law trademarks, the earliest historical
model does not consider Internet-related advancement at all, while the most
recent suggestions fail to consider the pragmatic utility of the Internet. The
test proposed in Part IV provides a more complete analysis that pairs
historical elements with technologically grounded considerations to
determine whether a business has sufficiently penetrated the market. Second,
regarding simultaneous use of common-law trademarks on the Internet, this
Article proposes that such uses are not only plausible but also necessary. This
Part offers suggestions for attorneys, courts, and legislatures as they work to
balance the geographically limited scope of trademark common law with the
borderless Internet. Part IV both provides an updated model for establishing
territorial rights through Internet use and offers a middle-ground approach
to concurrent Internet use of common-law trademarks.
II. A HISTORY OF TRADEMARK LAW AND THEORY

In many instances, a business’s sales emanate from a physical brick-and-
mortar location. 6 Any resulting intellectual-property rights in the trademark
used to make those sales are inextricably tied to that physical location. This is
because the common law traditionally limited rights in a mark to the
geographical areas in which customers recognized the mark as identifying
that particular business. 7 This customer recognition, called goodwill,8 could
6. W. Scott Creasman, Establishing Geographic Rights in Trademarks Based on Internet Use,

95 TRADEMARK REP. 1016, 1016–17 (2005).
7. Id. at 1017 (noting that the “point of sale provided an epicenter for calculating the
extent to which consumers identified a seller’s trademarks with its products”); see also
5 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION
§ 26:27 (4th ed. 2000) (“[T]he territorial scope of trademark rights must be defined in terms
of customer perception . . . .”).
8. Julius R. Lunsford, Jr., Trademarks: Prestige, Practice and Protection, 4 GA. L. REV. 322,
323 (1970) (“Good will is that which makes tomorrow's business more than an accident. It is
the reasonable expectation of future patronage based on past satisfactory dealings . . . . Only

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
only travel as far as those goods or services bearing the corresponding

trademarks. 9 As early trademark law developed prior to the ubiquity of
automobiles, trains, airplanes, and the Internet, the geographical reach of
such goodwill was initially quite limited. 10 As the law was created within the
confines of geographical limitations, courts could not predict the creation of
a cybermarket that transcended physical borders. Today, however, businesses
are not inextricably linked to a geographical location because the Internet
allows a business to transcend physical boundaries. 11 The Internet’s
pervasiveness offers a global, borderless dimension for marketing,
advertising, and selling services and products. 12 Trademark law, however, has
not moved as quickly as technological advancement, and the application of
geography-based modes of trademark protection persists even today.
Trademarks have been territorial in scope since their inception. This Part
discusses how trademark owners acquire rights in common-law trademarks
and how technology and mobility necessitated the creation of the
“concurrent-use doctrine” to deal with the problem of multiple, but
geographically distinct, uses of the same common-law trademark. 13
A. MARKETPLACE BASIS FOR ESTABLISHING COMMON-LAW
TRADEMARKS RIGHTS
The fundamental rule of trademark ownership is that the first party to
use a designation as a trademark acquires intellectual-property rights in that
designation, irrespective of registration.14 If a party does not register the
second in importance to the building of good will is the establishing of the marks by which it
is fixed and visualized.”).
9. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97 (1918) (“There is
no such thing as property in a trade-mark except as a right appurtenant to an established
business or trade in connection with which the mark is employed.”).
10. At least one scholar has traced Anglo-American trademark law back to the
sixteenth century. See generally Keith M. Stolte, How Early Did Anglo-American Trademark Law
Begin? An Answer to Schechter’s Conundrum, 8 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. 505
(1998).
11. See, e.g., Johnson v. Sosebee, 397 F. Supp. 2d 706, 710 n.1 (D.S.C. 2005)
12. 5 MCCARTHY, supra note 7, § 26:30.50.
13. See 5 MCCARTHY, supra note 7, § 26:1–4.
14. This is typically called the first-to-use doctrine. See In re Trade-Mark Cases, 100 U.S.
82, 94 (1879) (“At common law the exclusive right to it grows out of its use, and not its
mere adoption . . . . It is simply founded on priority of appropriation. We look in vain in the
statute for any other qualification or condition.”) (emphasis omitted). Inherently distinctive
trademarks fall squarely within this rule. On the other hand, trademarks that are not
inherently distinctive must acquire secondary meaning before they are protectable. As such,
rights in such marks ordinarily go to the first person to acquire secondary meaning. 2
MCCARTHY, supra note 7, § 16:1. This Article presumes that a trademark is either inherently
distinctive or has acquired secondary meaning.

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
mark, however, the unregistered, common-law trademark is geographically

limited in scope. The territorial scope of protection of common-law
trademarks is comprised of four interrelated zones: “sales, advertising,
reputation, and expansion.”15 The term “zone of actual goodwill” is typically
used to encompass sales, advertising, and reputation, while the term “zone of
natural expansion”16 stands apart as a relatively controversial and sometimes
disfavored measurement mechanism. The scope of the “zone of actual
goodwill” and the “zone of natural expansion” are outlined below.
1. The Zone of Actual Goodwill
The zone of actual goodwill is typically bifurcated into (1) the zone of
actual market penetration and (2) the zone of reputation. 17 A trademark
owner may establish the zone of actual goodwill by making a showing of
these two categories either together or independently of the other.18
The zone of actual market penetration includes the areas where products
have actually been sold to consumers. 19 Furthermore, courts have always
required something more than a de minimis amount of sales. 20 Today, most
jurisdictions apply some derivation of the following factors in determining
the territorial limits of a trademark’s protection: (1) the amount of sales of
products using the trademark, (2) positive and negative growth trends in the
geographical region, (3) the number of purchasing customers compared to
the total number of possible customers, (4) the amount of advertising in the
geographical region, and (5) the trademark owner’s market share. 21
15. 5 MCCARTHY, supra note 7, § 26:27; see also William J. Gross, The Territorial Scope of
Trademark Rights, 44 U. MIAMI L. REV. 1075, 1078 (1990) (noting three interrelated zones of
protection).
16. See Graeme W. Austin, The Territoriality of United States Trademark Law, in 3
INTELLECTUAL PROPERTY AND INFORMATION WEALTH 237 (Peter Yu ed., 2007).
17. Thomas F. Cotter, Owning What Doesn’t Exist, Where It Doesn’t Exist: Rethinking Two
Doctrines from the Common Law of Trademarks, 1995 U. ILL. L. REV. 487, 492 (1995).
18. See Adam V. Burks & Dirk D. Lasater, Comment, Location? Location? Location?: A
New Solution to Concurrent Virtual Trademark Use, 11 WAKE FOREST J. BUS. & INTELL. PROP. L.
329, 338 (2011).
19. Creasman, supra note 6, at 1017–18; Cotter, supra note 17, at 492.
20. 5 MCCARTHY, supra note 7, § 26:13.
21. Charles Jacquin Et Cie, Inc. v. Destileria Serralles, Inc., 921 F.2d 467, 473–74 (3d
Cir. 1990). The Third Circuit created the first four factors in Natural Footwear Ltd. v. Hart,
760 F.2d 1383, 1398–99 (3d Cir. 1985). The Third Circuit later added consideration of the
trademark owner’s market share in Charles Jacquin, 921 F.2d at 474. Other jurisdictions assess
market penetration using similar analyses. See Weiner King, Inc. v. Wiener King Corp., 615
F.2d 512, 523 (C.C.P.A. 1980) (noting “that the inquiry should focus on the party’s (1)
previous business activity; (2) previous expansion or lack thereof; (3) dominance of
contiguous areas; (4) presently-planned expansion; and, where applicable (5) possible market
penetration by means of products brought in from other areas”); Sweetarts v. Sunline, Inc.,

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
Where the zone of actual market penetration is limited, the zone of

reputation encompasses areas where consumers recognize the products using
the trademark but are not direct consumers of those products. 22 This zone is
made of areas where goodwill has been created among consumers through
mechanisms such as traditional and Internet media, 23 advertising, and word-
of-mouth. 24 Though physical distance is a helpful starting point in
determining the zone of reputation, 25 the zone of reputation can extend
much further than bordering towns or states. 26 Unlike the early days of
trademark law, perambulating customers are much more common and can
transport a trademark’s goodwill thousands of miles from a brick-and-mortar
location.27
Some early commentators have argued that the distinction between
the zone of actual market penetration and the zone of reputation should be
eliminated in favor of one unified test. 28 Eliminating the current bifurcated
380 F.2d 923, 929 (8th Cir. 1967) (finding that courts should consider the “plaintiff’s dollar
value of sales at the time defendants entered the market, number of customers compared to
the population of the state, relative and potential growth of sales, and length of time since
significant sales”).
22. Creasman, supra note 6, at 1018; see also Hanover Star Milling Co. v. Metcalf, 240
U.S. 403, 415–16 (1916) (“Into whatever markets the use of a trademark has extended, or its
meaning has become known, there will be the manufacturer or trader whose trade is pirated
by an infringing use be entitled to protection and redress.”).
23. 5 MCCARTHY, supra note 7, § 26:17 (“Media such as the Internet, radio and
television, national magazines and newspapers can carry a mark thousands of miles away
from the outlet where goods or services under the mark are offered for sale.”).
24. Creasman, supra note 6, at 1018; Cotter, supra note 17, at 492.
25. See Sinhdarella, Inc. v. Vu, No. C 07-04353 WHA, 2008 WL 410246, at *7 (N.D.
Cal. Feb. 12, 2008) (extending zone of reputation “across California as restaurant patrons
can regularly be expected to travel across the state”); Diner Inc. v. Dream Kitchen Inc., 95
Civ. 4130 (LMM), 1995 WL 438627, at *5–6 (S.D.N.Y. July 24, 1995) (extending trademark
protection by one hundred miles because “consumers becoming aware of defendant’s
establishment [in Manhattan] are likely to be confused . . . into thinking it is connected with
plaintiffs’ businesses . . . located in eastern Suffolk County”).
26. See Stork Rest., Inc. v. Sahati, 166 F.2d 348, 358 (9th Cir. 1948) (“In these days of
chain restaurants, one would not have to be uncommonly naive to assume that even a
‘humble’ cafe at Turk and Hyde Streets, San Francisco, might be an unpretentious branch of
a glittering New York night spot . . . . [H]owever, equity will protect even the uncommonly
naive against deception from unfair competition.”).
27. 5 MCCARTHY, supra note 7, §§ 26:17, 30 (“The purchasing buyer class [trade area]
for services such as hotels, motels, and restaurants are ambulatory and on the move. They
may carry the reputation of the mark thousands of miles away from the actual outlet.”).
28. See Gross, supra note 15, at 1110–12. This proposal for a singular “zone of
consumer recognition” stems from the notion that the zone of actual market penetration
and zone of reputation are both grounded in the likelihood of confusion standard and rely
on the same policy considerations. Id. at 1110. The “zone of consumer recognition” analysis

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
system is shortsighted, however, when assessing the zone of actual goodwill

in the Internet context. In particular, the zone of reputation is largely ignored
by such proposals. 29 Whereas business reputations in the late twentieth
century largely stemmed from actual sales, the Internet has allowed
businesses to establish lasting impressions, and thus build goodwill, even
without sales. 30
2. The Zone of Natural Expansion
Unlike the zone of actual goodwill, which is based on the presence of the
mark, the zone of natural expansion covers a geographical area completely
untouched by the putative trademark owner. The zone of natural expansion
provides a narrow amount of “breathing space” so that the trademark
owner’s goodwill is protected for future development efforts. 31 These
development efforts must be articulable and concrete. Some courts outline
specific considerations used to create boundaries for the zone of natural
expansion, including:
(1) How great is the geographical distance from the [trademark
owner’s] actual location to a point on the perimeter of the zone of
expansion?
(2) What is the nature of the business? Does it already have a large
or small zone of actual market penetration or reputation?
(3) What is the history of the [trademark owner’s] past expansion?
Has it remained static for years, or has it continually expanded into
new territories? Extrapolating prior expansion, how long would it
take the senior user to reach the periphery of the expansion zone
he claims?
(4) Would it require an unusual “great leap forward” for the
[trademark owner] to enter the zone, or is the zone so close to
considers sales volume, market size, actual consumer confusion, some forms of advertising,
and consumer travel distance. Id. at 1113–15.
29. Id. at 1110.
30. Two of the largest Internet companies in the United States have created significant
reputations without selling products to consumers at all. Google, for example, is the most
popular search engine both in the United States and the world. See Danny Goodwin, Google
Once Again Claims 67% Search Market Share, SEARCH ENGINE WATCH (Feb. 18, 2013),
http://searchenginewatch.com/article/2244472/Google-Once-Again-Claims-67-Search-
Market-Share/. Similarly, Facebook has built a significant amount of goodwill, with more
than one billion users regularly visiting its social media site. See The Internet’s Fantastic Four,
TECHONOMY, at 5 (Nov. 11, 2012), http://techonomy.com/wp-content/uploads/2013/
03/FantasticFour.pdf (transcript of the Techonomy 2012 conference).
31. Tally-Ho, Inc. v. Coast Cmty. Coll. Dist., 889 F.2d 1018, 1028 (1st Cir. 1989)
(internal citation omitted).

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
existing locations that expansion would be (or is) a logical, gradual,

step of the same length as those previously made? 32
Other courts have used a more general, fact-specific inquiry focusing on the
senior user’s expansion efforts.33
Several courts, however, have criticized the zone of natural expansion as
imprecise and unpredictable. 34 First, it can be difficult for courts, attorneys,
and the putative trademark owners to discern the borders of the zone. 35 In
addition, it can harm a good-faith, subsequent adopter of the trademark, also
known as the junior user, who has no way of predicting whether or not a
particular location falls within the zone. 36
Though relatively disfavored in the brick-and-mortar context, the
Internet may breathe new life into the zone of natural expansion. The zone
of natural expansion only applies to areas that are not considered “remote,” 37
and much of the criticism regarding this zone revolves around the innocent
junior user being unable to discover another company’s use in a far away
region of the country.38 Given that the Internet is increasingly removing such
geographical limitations, the historical criticisms carry less weight. 39 As
outlined later in this Article, the differences between brick-and-mortar
rationales and Internet-based considerations necessitate an updated legal
model.40
32. Id.
33. Accu Pers., Inc. v. Accustaff, Inc., 846 F. Supp. 1191, 1209 (D. Del. 1994).
34. See, e.g., Raxton Corp. v. Anania Assocs., Inc., 635 F.2d 924, 930 (11th Cir. 1980)
(noting that the doctrine of natural expansion is “unworkable, unfair, and, in the light of
statutory protection available today, unnecessary”); beef & brew, inc. v. Beef & Brew, Inc.,
389 F. Supp. 179, 185 (D. Or. 1974) (“[T]he zone of [natural] expansion doctrine has a more
than usually unclear place in the law of unfair competition. This is so because the doctrine is
more than usually imprecise and yet very powerful. . . . [It] can easily range too far and be
‘inconsistent with the objectives of free competition.’ ”). The modern Restatement of Unfair
Competition also rejects trademark rights based wholly on a zone of natural expansion.
RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 19 cmt. c (1995).
35. RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 19 cmt. c (1995).
36. Gross, supra note 15, at 1088 (citing Raxton Corp. v. Anania Assocs., Inc., 635 F.2d
924, 930–31 (1st Cir. 1980)). In such instances, the original trademark owner’s zone of
natural expansion is measured by the second-comer’s date of first use. See Tally-Ho, 889 F.2d
at 1027–28.
37. Tally-Ho, 889 F.2d at 1028.
38. See, e.g., Raxton, 635 F.2d at 927–31.
39. Circuit City Stores, Inc. v. CarMax, Inc., 165 F.3d 1047, 1057 (6th Cir. 1999)
(noting that, in the trademark context, “recent technological innovations such as the Internet
are increasingly deconstructing geographical barriers for marketing purposes”).
40. See infra Part III.

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
Generally, however, the bifurcated zone of actual goodwill and the zone
of natural expansion form the basis for protecting common-law trademarks,
and thus unregistered trademarks, in the United States. 41 Under the first-to-
use doctrine, once a trademark owner demonstrates that it is the first to
establish goodwill in either or both of these zones, it has exclusive priority in
the mark in those areas for the specific category of goods or services offered
using that mark. 42 That trademark owner, however, does not have priority in
the mark in other geographically remote areas. As an outgrowth of the first-
to-use doctrine, the judicially created concurrent-use doctrine grants
permission to other unrelated entities to use the same or a similar trademark
under certain circumstances. 43
B. CONCURRENT USE AND THE TERRITORIAL LIMITS OF COMMON-LAW
TRADEMARKS
Prior to 1870, the United States did not have a national trademark
registration system. 44 Businesses essentially sold products and services to
customers within their physical reach extending from a brick-and-mortar
location, and eventually the inevitable collision of common-law trademarks
took place.45 For example, the goodwill of MidWest as it expands eastward
from Nebraska is bound to collide with the goodwill of Southern’s business
as it expands westward from South Carolina at some point. The response to
this problem came in two different forms: (1) congressional enactment of a
comprehensive federal trademark statute that included a federal registration
system, and (2) judicial creation of the concurrent-use doctrine. 46
In 1870, Congress enacted a statute that attempted to provide nationwide
trademark rights to entities that registered their marks with the United States
41. Creasman, supra note 6, at 1017–20. Jurisdictions are inconsistent, however, on

whether or not the zone of natural expansion is a viable measurement mechanism. See
Cotter, supra note 17, at 505–08. Some courts apply the natural expansion doctrine broadly.
Tally-Ho, 889 F.2d at 1027–28; Spartan Food Sys., Inc. v. HFS Corp., 813 F.2d 1279,
1283–84 (4th Cir. 1987); Burger King of Fla., Inc. v. Brewer, 244 F. Supp. 293, 298 (W.D.
Tenn. 1965). Other jurisdictions only apply the doctrine where a second-comer, or junior
user, has acted in bad faith in selecting a trademark that is the same or similar to the original,
or senior, user. See, e.g., MTS, Inc. v. Red Tower Records, Tapes & Video, No. 88 C 8539,
1990 WL 267423, at *6–7 (N.D. Ill. Apr. 6, 1990); beef & brew, inc. v. Beef & Brew, Inc.,
389 F. Supp. 179, 185–86 (D. Or. 1974).
42. See supra note 14 and accompanying text.
43. David S. Barrett, The Future of the Concurrent Use of Trademarks Doctrine in the
Information Age, 23 HASTINGS COMM. & ENT. L.J. 687, 687 (2001).
45. JANE C. GINSBURG, JESSICA LITMAN & MARY L. KEVLIN, TRADEMARK AND
UNFAIR COMPETITION LAW 13 (4th ed. 2007).
46. See Cotter, supra note 17, at 492.

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
Patent Office. 47 This first federal trademark statute was enacted under Article
I, Section 8, Clause 8 of the U.S. Constitution, which empowers Congress
“[t]o promote the Progress of Science and useful Arts, by securing for limited
Times to Authors and Inventors the exclusive Right to their respective
Writings and Discoveries.”48
In In re Trade-Mark Cases, however, the Supreme Court held that the
recently enacted statute was unconstitutional, despite its noble purpose.49 In
striking down the statute, the Supreme Court noted that Article I, Section 8,
Clause 8 only protects writings that “are the fruits of intellectual labor,
embodied in the form of books, prints, engravings, and the like.” 50
Trademarks, according to the Supreme Court, did not fall into these
categories. 51 As such, Congress did not have the power to create a trademark
statute under Article I, Section 8, Clause 8. The Supreme Court was also
concerned that Congress had undertaken to regulate both intrastate and
interstate commerce under the Commerce Clause, which was
unconstitutional. 52 A comprehensive trademark statute would not be enacted
under the Commerce Clause until the Lanham Act almost eighty years later. 53
47. Act of July 8, 1870, ch. 230, §§ 77–84, 16 Stat. 198, 210–12.
48. U.S. CONST. art. I, § 8, cl. 8.
49. In re Trade-Mark Cases, 100 U.S. 82 (1879).
50. Id. at 94.
51. In particular, the Supreme Court was concerned that the new statute conflicted
with the fundamental principle of common-law trademarks, in which rights to a trademark
stem from use, not adoption. Id. The subjects of Article I, Section 8, Clause 8 have no such
use limitation.
52. See id. at 96–97 (“[I]f it be apparent that [a statute] is designed to govern the
commerce wholly between citizens of the same State, it is obviously the exercise of a power
not confided to Congress. We find no recognition of this principle in the chapter on trade-
marks in the Revised Statutes.”). The Commerce Clause provides that “[Congress shall have
Power] To regulate Commerce with foreign Nations, and among the several States, and with
the Indian tribes.” U.S. CONST. art. I, § 8, cl. 3. The Supreme Court went on to caution that
Congress should only create a trademark law that would fall within the ambit of the
Commerce Clause. Trade-Mark Cases, 100 U.S. at 96.
53. See Lanham Act, 15 U.S.C. §§ 1051–1129 (2012). This new statute grounded many
of its rules in the common law of trademarks. See GINSBURG ET AL., supra note 45, at 16.
There had been earlier trademark statutes, but none of these provided for nationwide
protection of trademarks. The first federal trademark registration statute was passed in 1881.
Act of Mar. 3, 1881, ch. 138, 21 Stat. 502. This statute, however, did not apply to interstate
commerce, and did little to assuage businesses’ concerns regarding trademark protection. 1
MCCARTHY, supra note 7, § 5:3 (noting that “American business chafed under the totally
inadequate provisions of the 1881 Act”). The second federal trademark statute was passed in
1905 and amended in 1920. Act of Feb. 20, 1905, ch. 592, 33 Stat. 724 (amended by Act of
Mar. 19, 1920, ch. 104, 41 Stat. 533). There were still issues with these iterations, because,
among other things, only technical marks were registrable, there was no meaningful way to

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
The Lanham Act was created to provide greater consistency in a nation

with growing interstate commerce and more societal mobility.54 It provides
nationwide trademark rights for those applicants that are successful in
prosecuting a trademark before the USPTO. 55 A trademark registered before
the USPTO gives constructive notice of the registrant’s claim of ownership
to everyone in the United States. 56 Registration, therefore, is a powerful
sword possessed, and sometimes wielded, by the trademark owner. 57
Even given the significant geographical benefits provided by registration,
however, the use of unregistered trademarks persists. 58 There may be any
number of reasons why an entity does not take advantage of the USPTO
registration system. Perhaps it filed a trademark application in the USPTO
but was unsuccessful. 59 Maybe it believed that trademark counsel would be
too expensive. 60 Or, it may simply have no understanding of intellectual
identify abandoned trademarks, and service marks were not registrable. 1 MCCARTHY, supra
note 7, § 5:3.
54. See H.R. REP. NO. 79-219, at 4 (1945).
55. Of course, an applicant is not entitled to a trademark registration. The application
process can be rigorous, and the trademark application may be denied for a myriad of
reasons. See Cotter, supra note 17, at 492 n.24.
56. 15 U.S.C. § 1072 (2012).
57. A federal trademark registration completely eliminates the territorial limitations
suffered by common-law trademarks. 5 MCCARTHY, supra note 7, § 26:31 (“a federally
registered mark has nationwide protection regardless of the territory in which the registrant
actually used the mark”).
58. Any estimation on the number of unregistered trademarks being used would be
purely anecdotal, if not impossible, to discern. Courts have noted the sheer difficulty in
finding even one specific unregistered mark. In Big Time Worldwide Concert & Sport Club at
Town Center, LLC v. Marriott International Inc., 236 F. Supp. 2d 791, 806 (E.D. Mich. 2003), the
district court recognized that one party’s inability to find the unregistered trademark at issue
was reasonable, even though it had “conducted a comprehensive search of federal, state, and
common law marks as well as [Internet] domain names.”
59. See, e.g., 15 U.S.C. § 1052(a)–(e) (2012) (outlining when a trademark examiner may
refuse to register a mark).
60. Ironically, this is typically an erroneous assumption. See, e.g., Frequently Asked
Questions About Trademarks, THE TRADEMARK GROUP, http://www.trademarkgroup.com/
trademark-services/trademark-faqs/index.html (last visited Dec. 5, 2013) (“While a company
is not required to register a trademark, the expense of registration is minimal compared to
the increased value one obtains in exchange.”). Attorneys in the United States charge an
average of $3,644 to clients to obtain a USPTO trademark registration. See DAVID A.
DIVINE & RICHARD W. GOLDSTEIN, AM. INTELLECTUAL PROP. LAW ASS’N, REPORT OF
THE ECONOMIC SURVEY I-100 (2013). This dollar figure includes a trademark clearance
search, analysis and opinion, a trademark registration application, and trademark prosecution
through registration. Obtaining nationwide protection for a common-law trademark would
require significantly more time and resources. See, e.g., Stork Rest. v. Sahati, 166 F.2d 348,
350–51 (9th Cir. 1948) (finding nationwide geographic rights for a trademark where the
plaintiff had been using the trademark for its night club since 1934, the night club was

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
property and the value of this intangible asset. 61 At any rate, there are
countless unregistered trademarks being used in the United States, and the
concurrent-use doctrine attempts to strike a balance between two equally
important goals of trademark law: 62 (1) protecting consumers from confusion
and (2) protecting a trademark’s goodwill. 63 The promulgation of the Lanham
Act complicated this balance, particularly in instances where the original
trademark owner, or “senior user,” did not register its mark and a subsequent
junior user received a federal trademark registration for the same or a
confusingly similar mark. 64 The jurisprudential context for the creation of the
concurrent-use doctrine and federal interpretation of the doctrine after the
Lanham Act’s creation illustrates the complexity of balancing a trademark’s
goodwill and protecting against customer confusion.
1. The Creation of the Concurrent-Use Doctrine
The concurrent-use doctrine establishes the territorial limits of common-
law trademarks. The Supreme Court announced the doctrine in two cases
from the early twentieth century: Hanover Star Milling Co. v. Metcalf 65 and
United Drug Co. v. Theodore Rectanus Co. 66 These two cases are outlined below.
a) Hanover Star Milling Co. v. Metcalf
Hanover involved a multi-party dispute in two different cases 67 over the
trademark TEA ROSE for flour packages, wrappings, and labels.68 The first
case concerned Illinois-based Hanover Star Milling Company, which had
expended considerable marketing efforts throughout Alabama, Mississippi,
described in the news as “the best and most publicized night club in the entire world,” and
the plaintiff had spent more than $700,000 in nationwide advertising and promotions from
1937–1948).
61. NicoleD, Understanding Intellectual Property Law and How It Can Protect Your Online
Business, SMALL BUSINESS ADMINISTRATION COMMUNITY BLOG (July 10, 2009, 12:38 PM),
http://www.sba.gov/community/blogs/community-blogs/business-law-advisor/
understanding-intellectual-property-law-and-how/ (“Many small business owners are not
aware of the basic . . . intellectual property protection available to them.”).
62.
63. 1 MCCARTHY, supra note 7, § 2:2; Barrett, supra note 43, at 690.
64. This is because the Act provides a successful registrant with a nationwide right to
use the trademark in the category of goods and services for which it has been registered. See
15 U.S.C. § 1065 (2012).
65. Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (1916).
66. United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918).
67. The two cases were filed within two months of each other and argued together, so
the Supreme Court addressed both in one opinion. Hanover, 240 U.S. at 405.
68. Id. at 405–07. The two parties also disputed the simultaneous use of a design
embodying three roses, but much of the Court’s analysis focused on the name TEA ROSE.
See id. at 406.

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
Georgia, and Florida since 1904, 69 and Steeleville Milling Company, also an
Illinois company, that sold and marketed its flour in Illinois, Tennessee,
Indiana, Arkansas, and Mississippi, with occasional shipments to Alabama. 70
Hanover developed a significant reputation among flour traders in its four-
state region, 71 and no competing TEA ROSE flour products had been sold in
the region since 1905. 72 When Metcalf, a third-party distributor, wanted to
sell Hanover’s flour in Alabama, he could not do so because of an exclusive
distribution agreement between Hanover and its distributor. 73 Thus, Metcalf
instead began distributing Steeleville TEA ROSE flour in that state. 74
Thereafter, Hanover sued Metcalf for trademark infringement and unfair
competition. 75
In the second case, Allen & Wheeler Company, an Ohio corporation that
sold TEA ROSE flour in Ohio, Pennsylvania, and Massachusetts, sued
Hanover. 76 Allen & Wheeler alleged that Hanover’s use of TEA ROSE in
Alabama, Florida, and Mississippi infringed its trademark. 77 Allen & Wheeler
had used the TEA ROSE trademark since as early as 1872, 78 but made no
showing regarding the extent of this use in the aforementioned markets. 79 In
addition, the Allen & Wheeler TEA ROSE flour had never been advertised,
sold, offered for sale, or even heard of in the flour markets of Alabama,
Florida, or Mississippi.80
The Court first addressed the Allen & Wheeler dispute by applying
trademark common law. 81 In finding that Allen & Wheeler could not
69. Id. at 422.

70. Id. at 421.
71. In fact, the company “had come to be known as the Tea Rose mill, and the words
‘Tea Rose’ in the flour trade in that territory meant flour of [Hanover’s] manufacture and
nothing else.” Id. at 422.
72. Id. at 421–22. Steeleville had made isolated sales in Alabama and Mississippi, but
the Court found these to be de minimis. Id. at 422–23.
73. Id. at 423.
74. Metcalf did so in grand fashion: he publicly announced that had secured TEA
ROSE flour and “put large banners on his mules and dray advertising to the public that he
had received a shipment of Tea Rose flour.” Id.
75. Id. at 405.
76. Id. at 407.
77. Id. at 408.
78. Hanover had not adopted TEA ROSE for flour until 1885. However, Hanover
adopted the trademark “in good faith without knowledge or notice that the name ‘Tea Rose’
had been adopted” by other parties. Id. at 410.
79. Id. at 409.
80. Id. There was some evidence that Allen & Wheeler sold flour in Georgia and
Alabama, but while using the trademarks ELDEAN PATENT or TROJAN SPECIAL. Id.
81. Id. at 411–12.

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
preclude Hanover from using TEA ROSE in the southeastern states of

Alabama, Georgia, Florida, and Mississippi, the Court noted that the purpose
of trademarks is to protect the goodwill built by a company through years of
effort. 82 The Court emphasized that a trademark owner is entitled to
protection and redress only in those markets where the trademark had
actually been used in some meaningful capacity. 83 The Court further
emphasized that its holding should not be limited solely by the physical
boundaries of states and municipalities:
Since it is the trade, and not the mark, that is to be protected, a
trade-mark acknowledges no territorial boundaries of municipalities
or states or nations, but extends to every market where the trader’s
goods have become known and identified by his use of the mark.
But the mark, of itself, cannot travel to markets where there is no
article to wear the badge and no trader to offer the article. 84
Because Hanover had built goodwill in its four-state area and adopted TEA
ROSE in good faith and without notice of Allen & Wheeler’s use, Allen &
Wheeler was estopped from claiming trademark protection Alabama, Florida,
and Mississippi.85
Hanover also prevailed in its case against Metcalf. Because Metcalf was
selling Steeleville’s TEA ROSE flower in the same Alabama counties as
Hanover’s distributor, and Hanover had earlier established a large amount of
goodwill in those counties through sales and advertising, the Court held that
Metcalf had run afoul of unfair competition law. 86 In addition, the Court was
convinced that Metcalf had acted in bad faith, noting that Metcalf intended
to “take advantage” of Hanover’s reputation. 87
In summary, Hanover established the territorial limits of a common-law
trademark. Under Hanover, the scope of protection for such marks is limited
to the geographical area where the mark is both known and recognizable by
82. Id. at 412.

83. Id. at 415–16.
84. Id. at 416 (citation omitted).
85. Id. at 419–20 (noting that Allen & Wheeler’s sales were at least 250 miles from the
nearest location of Hanover’s sales). The Court noted that Hanover could only take
advantage of this doctrine because it had not adopted its trademark “with some design
inimical to the interests of the first user, such as to take the benefit of the reputation of
[Allen & Wheeler’s] goods.” Id. at 415.
86. Id. at 421–24.
87. Id. at 423. Metcalf had not only used the words “Tea Rose,” but also used an
external packaging design that was quite similar to Hanover’s packaging. Id.

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
an articulable segment of possible customers. 88 A second case, United Drug

Co. v. Theodore Rectanus, Co., 89 answers the next logical question raised by the
Hanover holding: if a common-law trademark is protected in one geographical
area, are remote, unrelated users allowed to use the same or a similar mark in
a different geographical area?
b) United Drug Co. v. Theodore Rectanus Co.
Two years after Hanover, the Supreme Court revisited the issue of
concurrent use in Rectanus, 90 albeit for a different purpose. In Rectanus, a
dispute arose over the trademark REX in the medical drug context. 91 In
1877, Ellen Regis adopted REX as a trademark for her medicinal product
used to treat indigestion.92 Regis sold her products in the New England
states, with additional “inconsiderable sales in New York, New Jersey,
Canada, and Nova Scotia.” 93 She sold her business, including the trademark,
to United Drug Company in 1911, 94 which continued to use the REX
trademark in connection its Rexall retail drug stores around the United
States. 95
Meanwhile in Louisville, Kentucky, a druggist named Theodore Rectanus
had been using the trademark REX for his “blood purifier” product since
1883. 96 Rectanus selected the REX trademark without any knowledge of
Regis or United Drug’s use of REX. 97 In 1906, Rectanus sold his business
and trademark to the Theodore Rectanus Company, and both he and the
company continued to use the mark. 98 Rectanus expended money and effort
88. Id. at 415–16 (“Into whatever markets the use of a trademark has extended, or its
meaning has become known, there will the manufacturer or trader whose trade is pirated by
an infringing use be entitled to protection and redress.”).
89. 248 U.S. 90 (1918).
90. Id.
91. See id. at 94.
92. Id. Ellen Regis derived the trademark from her last name. Id.
93. Id. at 98.
94. In the time before she sold her company, Regis had received a state registration in
Massachusetts and a registration in the United States Patent Office. Id. At this time,
however, registration with the United State Patent Office did not provide nationwide notice
of trademark rights. Id. at 99–100.
95. Id. at 94.
96. Id. at 95. “Rex” was Theodore Rectanus’s nickname. Id.
97. Id.
98. Id.

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
to build a viable, albeit localized, business in Louisville and the contiguous

area before United Drug entered the market. 99
Though United Drug heard about Rectanus in June of 1911, it began to
ship boxes of “[REX] Dyspepsia Tablets” to Louisville in April of 1912. 100
Shortly thereafter, United Drug sued Rectanus for trademark infringement
and unfair competition. United Drug’s basic argument was that its reasonable
diligence in extending Rexall’s geographic reach should protect its Louisville
use, even though it was the last to enter the market and Rectanus had already
built goodwill there. 101
The Court noted that this argument was based on the “fundamental
error” that trademark rights exist in gross. 102 It further emphasized that
ownership rights in a trademark can exist only so long as it is attached to an
existing company that sells products or services using that mark. 103
Accordingly, the Court found that Regis had not established common-law
trademark rights in Kentucky. 104 It noted that, generally, “as between
conflicting claimants to the right to use the same mark, priority of
appropriation determines the question.” 105 The Court found, however, that
the rule did not apply in cases where two different companies were selling
products in remote markets without knowledge of the other. 106 Such an
application of the rule would allow United Drug to unfairly obtain the
benefit of the goodwill that Rectanus had created for the REX mark in
Louisville. 107 Therefore, the Supreme Court enjoined United Drug from
using REX in the Louisville territory.
In sum, Rectanus held that a senior user with nationwide, common-law
rights in a mark may not preclude a junior user who adopted a mark—in
good faith and without knowledge of the senior user—in a geographically
remote territory in cases where the junior user was the first to adopt that
99. Id. at 103. It had become so popular, in fact, that REX became the “trade
signature” of both Rectanus and his company in the Louisville area. Id. In fact, the
purchasing public only recognized REX as referring to Rectanus and his products. Id. at 95.
100. Id. at 95. These tablets appeared in local newspaper ads around the same time. Id.
101. Id. at 96–97.
102. Id. at 97.
103. Id.
104. Id. at 98–99 (citations omitted).
105. Id. at 100.
106. Id. (“[i]t would be a perversion of the rule of priority to [apply the general rule] in
our broadly extended country”).
107. Id.

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
mark. 108 The senior user, according to Rectanus, must bear the risk that a
junior user will adopt the same mark and build goodwill in remote
territories. 109
2. Federal Court Interpretations of the Concurrent-Use Doctrine Post–
Lanham Act
The basic rule from Hanover and Rectanus is that the concurrent-use
doctrine applies only where two questions can be answered affirmatively: (1)
is the junior user operating in a geographically remote market? and (2) did the
junior user adopt the trademark in good faith and without knowledge of the
senior user?110 While the United States did have a national trademark
registration system at the time of Hanover and Rectanus through the
Trademark Act of 1905, 111 this law did not extend nationwide rights to
trademarks or provide any rights greater than then-existing common law
rights. 112 The enactment of the Lanham Act in 1946, however, brought about
a wave of change. 113
The Lanham Act created, among other things, a federal registration
system that provides nationwide protection to trademarks registered with the
USPTO.114 It also provides that this registration establishes “constructive
notice of the registrant’s claim of ownership.” 115 This constructive notice
provision eliminates a junior user’s claim of good faith and lack of knowledge
in every jurisdiction in the United States. 116 By enacting the Lanham Act,
108. Id. at 101 (noting that United Drug, “being the newcomer in that market, must
enter it subject to whatever rights had previously been acquired there in good faith by the
Rectanus Company and its predecessor”).
109. Id. at 103.
110. These questions assume that the trademarks are confusingly similar or the same. In
bringing an infringement lawsuit to enforce its trademark rights, a trademark owner must
prove that the putative infringing use is likely to cause confusion among consumers. See 15
U.S.C. § 1114 (2012); 4 MCCARTHY, supra note 7, § 23:1 (characterizing the likelihood of
confusion test as the “[k]eystone of common-law and statutory trademark infringement”).
111. Act of Feb. 20, 1905, ch. 592, 33 Stat. 724; see supra note 53 and accompanying text.
112. Rectanus, 248 U.S. at 99–100. Registration under the applicable law at that time “did
not confer any greater rights than exist[ed] at common law.” 5 MCCARTHY, supra note 7,
§ 26:32.
114. Id.
115. 15 U.S.C. § 1072 (2012).
116. See, e.g., First Sav. Bank, F.S.B. v. First Bank Sys., Inc., 101 F.3d 645, 651 (10th Cir.
1996); Action Temp. Servs., Inc. v. Labor Force, Inc., 870 F.2d 1563, 1566 (Fed. Cir. 1989);
Foxtrap, Inc. v. Foxtrap, Inc., 671 F.2d 636, 640 n.5 (D.C. Cir. 1982); Old Dutch Foods, Inc.
v. Dan Dee Pretzel & Potato Chip Co., 477 F.2d 150, 156 (6th Cir. 1973); John R.
Thompson Co. v. Holloway, 366 F.2d 108, 115 (5th Cir. 1966).

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
Congress intended to reduce instances of, and the uncertainty associated

with, court-sanctioned concurrent use.117
The Act additionally created an “innocent prior user provision,” also
known as the “limited-area exception.” 118 The limited-area exception does
not substantively change the concurrent-use doctrine as outlined in Hanover
and Rectanus, but essentially creates a law—grounded in concurrent use—that
applies when one party has registered the trademark at issue. The limited-area
exception allows a junior user to continue its use of a mark in a remote area,
even in the face of an incontestable trademark registration, 119 provided the
user meets two requirements. First, the junior user must have adopted the
trademark in good faith and without knowledge of the senior user.120 Second,
the junior user must have continuously used the trademark prior to the
senior user’s priority date. 121 Though the statutory language only mentions
senior users that possess incontestable marks, the limited-area exception
applies regardless of whether a trademark has achieved incontestable
status. 122
The next two Subsections outline how early federal courts applied the
concurrent-use doctrine in light of both the elimination of constructive
notice and the creation of the limited-area exception. The first Subsection
addresses Dawn Donut Co., Inc. v. Hart’s Food Stores, Inc., 123 the seminal case
outlining the geographical limitations of federally registered trademarks. The
second Section outlines Thrifty Rent-a-Car System, Inc. v. Thrift Cars, Inc., 124 the
landmark case applying the limited-area exception.
117. 5 MCCARTHY, supra note 7, § 26:32 (citing Walter J. Halliday, Constructive Notice and
Concurrent Registration, 38 TRADEMARK REP. 111 (1948)).
118. 15 U.S.C. § 1115(b)(5) (2012); Thrifty Rent-A-Car Sys., Inc. v. Thrift Cars, Inc., 831
F.2d 1177, 1180–81 (1st Cir. 1987); 3 LOUIS ALTMAN & MALLA POLLACK, CALLMANN ON
UNFAIR COMPETITION, TRADEMARKS, AND MONOPOLIES § 20.22 (4th ed. 2013).
119. A trademark owner may apply for incontestable status for its trademark after five
years of continuous use of the mark. 15 U.S.C. § 1065 (2012). An incontestable trademark
provides conclusive evidence that a trademark owner has the right to use its registered
trademark. Id.
120. See Thrifty, 831 F.2d at 1181.
121. The priority date depends on when the trademark application was filed. “The
priority date is the registrant’s constructive use date in the case of registrations obtaining the
benefit of the 1988 Lanham Act revision, or the registration date, or the re-publication date
in the case of a pre-Lanham Act registration.” 3 ALTMAN & POLLACK, supra note 118,
§ 20:22 n.13.
122. Id. § 20:22.
123. Dawn Donut Co., Inc. v. Hart’s Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959).
124. Thrifty Rent-a-Car System, Inc. v. Thrift Cars, Inc., 831 F.2d 1177 (1st Cir. 1987).

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
a) Dawn Donut Co., Inc. v. Hart’s Food Stores, Inc.

Dawn Donut Co., Inc. v. Hart’s Food Stores, Inc. involved two federally
registered trademarks, DAWN and DAWN DONUT. 125 Dawn Donut
Company, Inc., a Michigan company, had used the trademark DAWN since
1922 on its bags of doughnut mix. 126 Dawn Donut had obtained federal
registrations in 1927 for both DAWN and DAWN DONUT in connection
with the retail sale of baked goods. 127 Since 1951, however, Hart Food Stores,
Inc. had used DAWN to sell baked products in its grocery stores within a
forty-five-mile radius of Rochester, New York. 128 Hart had adopted the
DAWN trademark in good faith and without actual knowledge of Dawn
Donut. 129 Though Dawn Donut had not licensed or sold products in Hart’s
trading area for more than thirty years, Hart was charged with constructive
notice of Dawn Donut’s trademark rights as of July 5, 1947, the effective
date of the recently enacted Lanham Act. 130
Dawn Donut sued Hart for trademark infringement. In its defense, Hart
argued that Dawn Donut should not be given exclusive trademarks rights in
a trading region in which it had not entered for more than thirty years, even
if it did have federally registered trademarks. 131 In finding Hart’s argument
inconsistent with the Lanham Act, the Second Circuit first noted that
trademark registration on the principal register provided constructive notice
to Hart of Dawn Donut’s trademark ownership. 132
Though Hart could not exclude Dawn Donut from the Rochester area 133
the court also limited Dawn Donut’s ability to enjoin Hart’s use. The Second
125. Dawn Donut, 267 F.2d at 360.

126. Id. at 361. It later used DAWN on sweet dough mixes and cake mixes. Id.
127. Id. at 360, 362.
128. Id. at 361.
129. According to Hart’s president, Hart adopted the trademark without searching to
see if another entity was using it. Id. at 362. The company chose the mark “largely because of
a slogan ‘Baked at midnight, delivered at Dawn,’ ” that it had used from 1929–1935. Id. at
361–62.
130. Id. at 361–62. Dawn Donut had applied for and received federal registrations
before the Lanham Act went into force. After the Lanham Act passed, its constructive
notice provision applied to both the DAWN and DAWN DONUT trademarks. Id. at 362
(“[B]y virtue of the Lanham Act, 15 U.S.C.A. § 1072, [Hart] had constructive notice of
[Dawn Donut’s] marks as of July 5, 1947, the effective date of the Act.”).
131. Id. at 362, 364.
132. Id. at 362 (“by eliminating the defense of good faith and lack of knowledge, § 1072
affords nationwide protection to registered marks, regardless of the areas in which the
registrant actually uses the mark”) (citations omitted).
133. Id. at 362–63.

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
Circuit created what has come to be known as the “Dawn Donut rule,” 134
holding:
[I]f the use of the marks by the registrant and the unauthorized
user are confined to two sufficiently distinct and geographically
separate markets, with no likelihood that the registrant will expand
his use into defendant’s market, so that no public confusion is
possible, then the registrant is not entitled to enjoin the junior
user’s use of the mark. 135
The determinative question, according to the court, was the likelihood of
Dawn Donut’s expansion into Hart’s trading area as part of its normal
business plan. 136 The Second Circuit found that such an expansion was
unlikely because Dawn Donut had not used the trademark in the Rochester
trading area for such a long time. 137 The court thus concluded that Hart
could continue to use the DAWN trademark in that area. 138 However, it also
left open the possibility that Dawn Donut could enjoin Hart’s activities when
it could prove “intent to use the mark at the retail level” in the Rochester
trading region. 139 Thus, Dawn Donut could only claim harm regarding the
future intended development of its business and the corresponding use of the
DAWN and DAWN DONUT trademarks.
In sum, the Dawn Donut rule prohibits enjoining a junior user’s activities
when it does not compete in the same geographic market as a senior federal
registrant because there is no likelihood of confusion until the senior federal
registrant shows a probability of expansion into the junior user’s trading
area. 140 Thrifty Rent-a-Car System, Inc. v. Thrift Cars, Inc., 141 which came along
several years later, clarified the extent to which the limited area defense could
be used to protect a junior user’s use in a geographically remote area.
134. The Dawn Donut rule has been accepted by many federal courts. See, e.g., Lone Star
Steakhouse & Saloon, Inc. v. Alpha of Va., Inc., 43 F.3d 922, 931–32 (4th Cir. 1995); Minn.
Pet Breeders, Inc. v. Schell & Kampeter, Inc., 41 F.3d 1242, 1246–47 (8th Cir. 1994); Coach
House Rest., Inc. v. Coach & Six Rests., Inc., 934 F.2d 1551, 1562 (11th Cir. 1991); Church
of Scientology Int’l v. Elmira Mission of the Church of Scientology, 794 F.2d 38, 45 (2d Cir.
1986); John R. Thompson Co. v. Holloway, 366 F.2d 108, 115–16 (5th Cir. 1966).
135. Dawn Donut, 267 F.2d at 364.
136. Id. This was an early articulation of the zone of natural expansion. See supra notes
31–35 and accompanying text.
137. Dawn Donut, 267 F.2d at 365. In fact, the number of Dawn Donut’s licensees had
decreased significantly over time. Id.
138. Id.
139. Id.
141. Thrifty Rent-a-Car System, Inc. v. Thrift Cars, Inc., 831 F.2d 1177 (1st Cir. 1987).

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
b) Thrifty Rent-a-Car System, Inc. v. Thrift Cars, Inc.

Thrifty involved a dispute between the owners of trademarks in THRIFT
and THRIFTY. 142 Thrifty Rent-a-Car System had used THRIFTY as a
trademark for rental car services since 1958. 143 It applied for federal
registration of THRIFTY on July 30, 1962, and the trademark was ultimately
registered in July of 1964. 144 Thrifty incrementally expanded its business from
a single operation in Oklahoma to the fifth largest rental car company by the
time of the litigation. 145 The dispute arose several years after Thrifty opened a
Massachusetts outlet in December of 1967. 146
Unbeknownst to Thrifty, Thrift Cars of Massachusetts began operating
in October of 1962 in East Taunton, Massachusetts without any knowledge
of Thrifty’s business. 147 Thrift Cars used the trademark THRIFT in a
replacement car market bridging “the short term car rental and the longer
term automobile lease.” 148 Thrift Cars delivered cars to Boston, Nantucket,
and Cape Cod, and advertised in the Taunton area, Cape Cod, Martha’s
Vineyard, and Nantucket. 149 In 1970, Thrift Cars moved a major part of its
business to Nantucket and operated it primarily as a short-term car rental
service.150 This business directly competed with Thrifty, and Thrifty
ultimately sued Thrift Cars for trademark infringement. 151
The court noted that the limited area defense could apply in Thrift Cars’s
favor, but only if Thrift Cars demonstrated
(1) that it adopted its mark before Thrifty’s 1964 registration under
the Lanham Act, and without knowledge of Thrifty’s prior use;
(2) the extent of the trade area in which Thrift Cars used the mark
prior to Thrifty’s registration; and
(3) that Thrift Cars had continuously used the mark in the pre-
registration trade area. 152
142. The two litigants stipulated that these trademarks were confusingly similar, so the
First Circuit did not address the likelihood of confusion question. Id. at 1179.
143. Id.
144. Id.
145. Id.
146. Id.
147. Id.
148. Id.
149. Id.
150. Id.
151. Id.
152. Id. at 1181.

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
Even if Thrift Cars prevailed, its rights would only extend to the area
where it had penetrated the market as of Thrifty’s July 1964 priority date. 153
The First Circuit recognized that Thrift Cars had adopted its mark before
July 1964, but it had only continuously used the mark in East Taunton, and
not Cape Cod, Martha’s Vineyard, or Nantucket. 154 In particular, Thrift Cars
had established a zone of actual goodwill through its sales and advertising in
East Taunton. 155 Thrift Cars also “made a showing of general reputation in
the East Taunton area” through its marketing efforts. 156 While Thrift Cars
also attempted to show its desire to expand into the surrounding Nantucket
market, it did not present sufficient concrete plans regarding its expansion
efforts. 157 Thus, the limited area defense applied, but Thrift Cars’s activities
and common-law trademark rights were confined to Taunton, the market
area where it had used the mark before Thrifty’s registration. 158
Ultimately, Thrifty stands for the principle that, if a junior user meets the
three limited-area exception requirements codified in § 1115(b)(5), a court
may allow the junior user to continue using the mark concurrently with the
senior trademark registrant’s use in other locations in the United States. 159
The senior trademark registrant may be precluded from using the mark in the
junior user’s area, while the junior user may be precluded from using the
mark outside of that limited area, subject to the Dawn Donut rule. 160
3. The Confluence of Common-Law Trademarks, the Concurrent-Use
Doctrine, and the Lanham Act
As discussed above, common-law trademarks are protected only in a
geographical area that has some connection to the trademark owner’s
business.161 This area, the delineation of which determines the scope of a
trademark owner’s rights, is comprised of the zone of actual goodwill and/or
the zone of natural expansion.162 The first party to use a mark to sell goods
or services is labeled the senior user and gains common-law trademark rights
153. Id.
154. Id. at 1182 (finding that “sporadic rentals” in Nantucket and southeastern
Massachusetts were not enough to establish a continuous presence in those areas).
155. See id. at 1183.
156. See id.
157. See id.
158. See id. The court noted that “East Taunton is not a separate entity but simply an
integral part of Taunton itself.” Id.
159. See 5 MCCARTHY, supra note 7, § 26:44.
160. See id.
161. See supra Section II.A.
162. See supra notes 18–43 and accompanying text.

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
in these zones. 163 Historically, multiple parties were able to use the same or
similar unregistered trademarks in their exclusive zones of use, because no
party had a right to “monopolize markets that his trade has never
reached.” 164 Even under the Lanham Act, the limited area defense serves to
delimit a “safe zone” for common-law trademarks facing infringement claims
from a junior user who has successfully registered its mark. 165
Applying the concurrent-use doctrine from Hanover and Rectanus, early
anachronistic cases assumed that the typical trade circle for sales and
distribution was likely limited to a fifty-to-seventy-mile radius. 166 Today,
however, it is clear that a trademark’s territorial scope depends largely on the
nature of the trademark owner’s business and where its consumers are
actually located. 167 The Internet has significantly impacted both of these
considerations by providing a means for reaching millions of people in every
state in the United States, regardless of the nature of the business. 168
Goodwill can be much more easily created beyond states, counties, or
municipalities. 169 Though traditional analyses provide relatively clear
guidelines for businesses that have one or more physical, brick-and-mortar
locations, using the Internet to market, advertise, or operate a business adds a
dimension that courts have thus far struggled to reconcile. Part III assesses
the most recent case law attempting to integrate geographically delimited
common-law principles with the borderless Internet.
163. Allard Enters., Inc. v. Advanced Programming Res., Inc., 249 F.3d 564, 572 (6th
Cir. 2001).
164. Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 416 (1916).
165. Indeed, a majority of jurisdictions apply the Dawn Donut rule. See supra note 134.
166. 3 ALTMAN & POLLACK, supra note 118, § 20:22 (citing Chapin-Sacks Mfg. Co. v.
Hendler Creamery Co., 254 F. 553 (4th Cir. 1918); Saunders Sys. Atlanta Co. v. Drive It
Yourself Co. of Ga., 123 S.E. 132 (Ga. 1924); Staples Coal Co. v. City Fuel Co., 55 N.E.2d
934 (Mass. 1944); The Tent v. Burnham, 168 N.E. 735 (Mass. 1929); Loew’s Boston
Theatres Co. v. Lowe, 143 N.E. 496 (Mass. 1924); Kaufman v. Kaufman, 111 N.E. 691
(Mass. 1916)).
167. See Alexander’s Dept. Stores, Inc. v. Rapoport, 113 N.Y.S.2d 718, 722 (N.Y. Sup.
Ct. 1952).
168. As of Dec. 11, 2011, there are approximately 245,203,319 Internet users in the
United States, or 78.3% of the total population. North America, INTERNET WORLD STATS,
http://www.internetworldstats.com/america.htm (last visited Dec. 1, 2013).
169. See, e.g., Circuit City Stores, Inc. v. CarMax, Inc., 165 F.3d 1047, 1057 (6th Cir.
1999) (“given that recent technological innovations such as the Internet are increasingly
deconstructing geographical barriers for marketing purposes, it . . . would be timely to
determine whether the Dawn Donut Rule has outlived its usefulness”).

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
III. APPLYING TRADEMARK COMMON LAW PRINCIPLES

IN THE INTERNET ENVIRONMENT
The accessibility of the information on the Internet has strongly affected
conventional trademark analyses. 170 Theoretically, zones of protection could
be instantaneously enlarged with the creation of a website that reaches
consumers throughout the United States. 171 Thinking back to the opening
hypothetical, 172 MidWest’s serendipitous Internet popularity allowed a small
brick-and-mortar store to reach customers around the United States that it
would otherwise have been unable to reach without the borderlessness of
cyberspace. MidWest, therefore, could establish zones of market penetration
and zones of reputation for its SHINY FITS trademark in far-reaching cities,
states, and towns. The first issue, therefore, revolves around how to identify
the territorial scope of protection of common-law trademarks when its use is
not geographically limited.
The inevitable collision between MidWest with Southern, or other
companies utilizing the SHINY FITS trademark, presents a second related
issue. Should more than one company be allowed to concurrently use a
common-law trademark on the Internet to sell the same (or similar) goods or
services? The concurrent-use doctrine historically allowed multiple parties to
do as much if they were in geographically remote areas. However, cases from
the early twentieth century were decided at a time when a brick-and-mortar
location was the epicenter from which goods and services were offered and
sold.173 The Internet has made a company’s physical location less relevant. 174
For example, Google’s physical location is irrelevant for consumers who
want to use the company’s well-known search engine. As such, it is no longer
feasible to apply a rule that will not accommodate a likelihood of confusion
when the parties are geographically remote.
As courts are only recently beginning to address these issues, the case law
is not yet fully developed and courts have provided little more than anecdotal
guidance in this arena. The following Sections outline how courts and
170. Kimberly A. Eckhart & T. Kearney, Is the Dawn Donut Rule Still Viable in the
Internet Age?, 67 INTA BULL. (Apr. 1, 2012), available at http://www.inta.
org/INTABulletin/Pages/IstheDawnDonutRuleStillViableintheInternetAge.aspx (“The
explosive growth of Internet use over the past ten years has had a profound effect upon the
territorial reach and limits of trademark rights.”).
171. Id.
172. See infra Part I.
173. Id.
174. Id.

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
scholars address creating common-law trademark rights through Internet use

and the subsequent concurrent use questions that arise.
A. DEFINING THE GEOGRAPHICAL SCOPE OF COMMON-LAW
TRADEMARK RIGHTS BASED ON INTERNET USE
Trademark rights are acquired in the United States once a party begins to
use the mark in commerce to sell goods or services. It is generally accepted
that the mere creation of a website featuring the trademark does not mean
that this mark has penetrated each of the fifty states, established a reputation
in all of those markets, or created common-law trademark rights in all of
those markets. 175 As noted by Professor Thomas McCarthy, “[k]nowledge
among persons in the territories in issue must be proven by evidence, not
assumed just because the Internet is national and global.”176 In analyzing such
evidence in the Internet context, a number of jurisdictions apply a derivation
of four factors to determine where a company’s market penetration is
sufficient to warrant trademark protection, including: (1) volume of sales, (2)
growth trends, (3) number of buyers in ratio to potential customers, and (4)
amount of advertising. 177 These factors have been derived from non-Internet
cases. In addition, to establish use through advertising, whether it be on the
Internet or otherwise, the use “must be open and notorious and of such a
nature and extent that the mark has become popularized in the public mind
to associate the mark with the product or service’s provider.” 178 Thus, the
vast majority of Internet cases are grounded in the idea that a trademark
owner’s use must sufficiently impact the physical world in specific,
geographical locations.
Common-law trademark ownership, however, does not have to be
grounded in extensive use. 179 Common law rights can be created even if there
is neither “deep market penetration” nor “widespread recognition.”180 The
175. Just “because a Web site featuring a trademark can theoretically be accessed on
computers from Florida to Alaska . . . does not mean that the trademark is known and
established [in these] locations.” 5 MCCARTHY, supra note 7, § 26:30.50.
176. Id. (citation omitted).
177. Allard Enters., Inc. v. Advanced Programming Res., Inc., 249 F.3d 564, 574 (6th
Cir. 2001); Natural Footwear Ltd. v. Hart, Schaffner & Marx, 760 F.2d 1383, 1398–99 (3d
Cir. 1985); Sweetarts v. Sunline, Inc., 380 F.2d 923, 929 (8th Cir. 1967).
178. Dudley v. Healthsource Chiropractic, Inc., 883 F. Supp. 2d 377, 390 (W.D.N.Y.
2012) (citing Am. Express Co. v. Goetz, 515 F.3d 156, 161–62 (2d Cir. 2008)).
179. But, merely advertising a product on a website using the trademark is insufficient to
create priority. See Tassel Ridge Winery, LLC v. Woodmill Winery, Inc., No. 5:11-cv-00066-
RLV-DSC, 2013 WL 5567505, at *5 (W.D.N.C. Oct. 9, 2013).
180. Circuit City Stores, Inc. v. CarMax, Inc., 165 F.3d 1047, 1055 (6th Cir. 1999).

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
use only need be “consistent and continuous.” 181 Particularly in the Internet
context, a business can make a small number of sales in each state in the
United States with significantly less effort. 182 Questions remain, however,
regarding how to measure the territorial limits of trademark protection in
such instances.
Some courts have acknowledged in dicta that an active Internet presence
could possibly bestow nationwide trademark rights. 183 Thus far, however,
trademark owners have unsuccessfully argued that mere Internet presence
widens the geographical zone of trademark protection. For example, in Echo
Drain v. Newsted, 184 Echo Drain, a local Dallas, Texas band, claimed common-
law trademark rights in ECHO DRAIN. It adopted ECHO DRAIN in
February of 2000, and by September of 2002 it had performed nineteen live
shows in the Dallas area. 185 Among other activities, Echo Drain created a
website, www.echodrain.com, that provided news about and pictures of the
band. 186 Visitors could also download Echo Drain’s music and post messages
on the site. 187
In addressing the scope of ECHO DRAIN’s zone of actual goodwill, the
court emphasized the local nature of the band and limited any possible
trademark rights to the Dallas–Forth Worth area. 188 Even though Echo
Drain’s website was, of course, accessible by any person in the United States,
Echo Drain offered “no evidence that people outside of the Dallas–Forth
Worth area [had] accessed the website, downloaded performances from the
website, or even posted messages to the website.” 189 Regarding ECHO
DRAIN’s possible zone of natural expansion, the court looked primarily at
Echo Drain’s activities and concluded that its lack of growth plans prohibited
181. See id.; see also La Société Anonyme des Parfums le Galion v. Jean Patou, Inc., 495
F.2d 1265, 1271–72 (2d Cir. 1974) (holding that trademark use must be “deliberate and
continuous, not sporadic, casual or transitory”).
182. See Eckhart & Kearney, supra note 170 (“It used to take a company months—if not
years—to put in place the mechanisms to advertise or sell products or services outside its
immediate geographic region. Now, through the Internet, these tasks can sometimes be
accomplished in a matter of hours.”).
183. See, e.g., Pure Imagination, Inc. v. Pure Imagination Studios, Inc., No. 03 C 6070,
2004 WL 2967446, at *11 (N.D. Ill. Nov. 15, 2004) (recognizing that “the operation of an
active web site on the Internet could constitute nationwide trademark use”).
184. Echo Drain v. Newsted, 307 F. Supp. 2d 1116, 1119 (C.D. Cal. 2003).
185. Id.
186. Id.
187. Id.
188. Id. at 1127–28.
189. Id. at 1128.

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
a zone of natural expansion beyond the Dallas–Fort Worth area, even

though residents in other states could access the website.190
Other jurisdictions have acknowledged that the advent of the Internet
may necessitate the creation of a new sui generis zone of protection, existing
in addition to the zones of actual goodwill and natural expansion. In Optimal-
Pets, Inc. v. Nutri-Vet, LLC, 191 the court posited that the Internet could be
viewed “as its own distinct market.” 192 Though neither party in Optimal-Pets
sought common law rights in this “distinct market,” the court, through dicta,
noted that the Internet “could be evaluated separately from any geographic
territory.” 193 Common-law rights for Internet sales could be established by
determining the level of cyber-market penetration, “even though such rights
could not be established as to any physical geographical area.” 194
However, both courts and scholars have noted the difficulty viewing the
Internet this way. Even the most comprehensive Internet search may not
consistently locate the relevant trademark. 195 Search results are inextricably
dependent upon the veracity of a third party’s search engine.196 Furthermore,
there is not currently a way to divide the Internet into particular zones or
regions.197
Even in the face of such difficulties, trademark owners have tried to
assert common law-rights over the cyber-market posited in Optimal-Pets. In
Dudley v. Healthsource Chiropractic, Inc., 198 for example, Donald Dudley claimed
190. The opposing party, Echobrain, was located in California. Id. at 1120. Echo Drain
conceded “that although its website is accessible in California, it [had] no plans to do any
business in California.” Id. at 1128.
191. Optimal-Pets, Inc. v. Nutri-Vet, LLC, 877 F. Supp. 2d 953 (C.D. Cal. 2012).
192. Id. at 962 (citing Barrett, supra note 43, at 715–20).
193. Id.
194. Id.
195. See Big Time Worldwide Concert & Sport Club at Town Ctr., LLC v. Marriott Int’l,
Inc., 236 F. Supp. 2d 791, 806 (E.D. Mich. 2003); Creasman, supra note 6, at 1022; Robert
Nupp, Note, Concurrent Use of Trademarks on the Internet: Reconciling the Concept of Geographically
Delimited Trademarks with the Reality of the Internet, 64 OHIO ST. L.J. 617, 656–65 (2003).
196. Search engines can be quite inefficient and are constantly updated and revised to
provide better results. See, e.g., Nupp, supra note 195, at 657–60. Indeed, Google, the most-
used search engine on the Internet, has made several modifications to its algorithms in
recent years to improve search results. See, e.g., Alistair Barr, Google Unveils Major Overhaul of its
Search Engine, USA TODAY (Sept. 26, 2013), http://www.usatoday.com/story/tech/2013/
09/26/google-overhauls-search-engine/2877491 (noting that Google’s latest search engine
modification “affects 90% of [its] search results . . . [and] makes search results more relevant
and useful”).
197. Cf. Reno v. ACLU, 521 U.S. 844, 890 (1997) (“Cyberspace undeniably reflects some
form of geography; chat rooms and Web sites, for example, exist at fixed ‘locations’ on the
Internet.”).
198. Dudley v. Healthsource Chiropractic, Inc., 883 F. Supp. 2d 377 (W.D.N.Y. 2012).

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
common-law trademark rights in HEALTHSOURCE CHIROPRACTIC for

private chiropractic services in several New York counties and on the
Internet. 199 The court found that the Internet could not be appropriated in
this manner, noting that “[t]he [I]nternet is not . . . a geographic territory to
be subdivided; instead it is a global communication medium that is accessible
from anywhere on the planet.” 200 As such, the court held that Dudley could
not claim territorial rights to the Internet. 201
Courts and trademark owners alike, therefore, have struggled to
determine whether the scope of protection for common-law trademarks used
on the Internet should extend throughout a nationwide market, necessitate
exclusive rights in the cyber-market, or require something else altogether.
B. THE POSSIBILITY OF CONCURRENT USE ON THE INTERNET
In addition to the problem of determining the zone of protection for
specific trademarks, an increasingly common question has been raised: how
should courts assess concurrent Internet use among multiple parties with
legally established zones of trademark protection? In other words, can
identical or confusingly similar but geographically distinct trademarks be used
simultaneously on the Internet for the same goods or services?
At least two courts have stated that one party cannot claim exclusive
rights to the Internet over other parties. For example, in Allard Enterprises, Inc.
v. Advanced Programming Resources, Inc., 202 Allard Enterprises, Inc. registered the
trademark APR OF OHIO for employee-placement services with the
USPTO in 1996. 203 Advanced Programming Resources, Inc., however, had
used APR for similar services since 1989,204 and the court designated it as the
senior user. 205 Advanced Programming sought an injunction prohibiting
Allard from using APR on the Internet, which the court denied.206 The court
noted that “permitting some form of [I]nternet use seems necessary;
otherwise, if two parties have concurrent rights to the same mark in distinct
199. Id. at 394 (“By claiming exclusivity to the ‘HealthSource Chiropractic’ mark on the
[I]nternet, [Dudley] assumes that the [I]nternet is a territory in which he can claim exclusive
rights.”).
200. Id.
201. Id. at 394–95.
202. Allard Enterprises, Inc. v. Advanced Programming Resources, Inc., 249 F.3d 564
(6th Cir. 2001).
203. See id. at 568.
204. Id. at 568.
205. Id. at 572.
206. Id.

103.68.37.13ffff:ffff:ffff on Thu, 01 Jan 1976 12:34:56 UTC
geographical areas, neither party would ever be allowed any use of the
[I]nternet.” 207
Similarly, the Dudley court noted, in the context of senior and junior users
on the Internet, that “[t]he rights of concurrent users would be substantially
harmed if one user were able to monopolize the [I]nternet to the exclusion of
other lawful users of the same mark.” 208 The Dudley court cautioned that
lawful concurrent users should be precluded from using their trademark on
the Internet in a way that would encroach into another’s geographical zone in
bad faith. 209 Warning aside, however, the court reiterated that no party could
reasonably believe that it has a greater right to the Internet than any other
party. 210
In addition, an alternative viewpoint raises concerns about a legitimate
problem. The essence of the problem can be articulated as follows: if two
parties have concurrent use rights in the same trademark, and one of those
parties creates a website intending to market its products within its
geographical region, that website is still easily accessible by others outside the
region, including those in the second party’s zone. 211 For instance, consumers
looking for Wally’s Widget World in Oregon may instead be led to Wally’s
Widget World in Florida. At least one court has hinted at a willingness to
provide exclusive rights to the Internet in such instances. The Fourth Circuit
noted that it could not imagine a situation where concurrent users of
common-law trademarks can simultaneously exist on the Internet.212 Scholars
have noted that such contemporaneous Internet use would inevitably lead to
confusion. 213
In summary, federal courts are only beginning to address common-law
trademarks used on the Internet. The dearth of case law, coupled with
inconsistent results and dicta, currently leaves trademark owners, particularly
those who rely heavily or exclusively on Internet commerce, with no clear
guidelines. Most courts merely provide anecdotal observations regarding the
Internet’s impact on traditional analyses or suggestions for future
consideration. As such, there is a clear need for guidance in measuring a
207. Id. at 575.

2012).
209. Id. at 395.
210. Id.
211. See id.
212. See Harrods Ltd. v. Sixty Internet Domain Names, 302 F.3d 214, 234 n.9 (4th Cir.
2002) (citing Graeme B. Dinwoodie, (National) Trademark Laws and the (Non-National) Domain
Name System, 21 U. PA. J. INT’L ECON. L. 495 (2000)).
213. See Burks & Lasater, supra note 18, at 349–50.

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
trademark’s zone of protection and a framework for establishing concurrent

use of confusingly similar trademarks on the Internet. 214
IV. AN INTERNET FRAMEWORK FOR COMMON-LAW

TRADEMARKS
Courts have largely chosen to ignore the unique characteristics of the
Internet in fashioning remedies for trademark owners. 215 Several
commentators, however, have proposed models for establishing a territorial
zone of protection. 216 Similarly, scholars have suggested a wide variety of
approaches to concurrent use on the Internet. 217 The following Sections
build on these suggestions and offer updates and improvements that
contemplate technological advancement and pragmatic considerations
necessitated by the character of the Internet.
A. ESTABLISHING TERRITORIAL RIGHTS THROUGH INTERNET USE: AN
UPDATED MODEL
The minimum threshold for establishing common-law trademark rights
revolves around the trademark’s use being deliberate, consistent, and
continuous. 218 Any model used to establish territorial rights through Internet
use must articulate the zone of actual goodwill and the zone of expansion as
currently applied to brick-and-mortar businesses.219 While Professor
McCarthy has not suggested a specific test, he explained that Internet use can
be likened to traditional large-scale channels like national catalog sales, radio
and television marketing, and magazine advertisements when establishing a
territorial zone of protection.220 Another commentator, Scott Creasman, has
combined personal jurisdiction and traditional trademark infringement
standards to create a five-factor test to determine common-law trademark
214. See, e.g., Harrods, 302 F.3d at 234 n.9 (stating that concurrent use on the Internet “is
one of the difficulties that courts and legislatures will eventually have to face as they work to
harmonize the geographically limited nature of trademark law with the global nature of the
Internet as a medium”).
215. Cf. Dudley, 883 F. Supp. 2d at 393–96 (determining that “[r]estricting internet use to
the federal registrant would . . . equally undermine the territorial rights of a senior common
law user. Consequently, this Court concludes that neither party can claim exclusive rights to
the [I]nternet”).
216. See Burks & Lasater, supra note 18, at 344–47; Creasman, supra note 6, at 1029–32.
217. See, e.g., Barrett, supra note 43, at 715–20; Burks & Lasater, supra note 18, at 348–57.
218. See Circuit City Stores, Inc. v. CarMax, Inc., 165 F.3d 1047, 1054–55 (6th Cir.
1999).
219. See Creasman, supra note 6, at 1022 (“[t]he traditional emphasis on ‘zones’ in bricks-
and-mortar trademark law analysis remains applicable to the Internet”).
220. MCCARTHY, supra note 7, § 26:30.50.

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
rights grounded in Internet use. 221 Both of these suggestions provide useful
starting points in assessing territorial rights, but neither appropriately
considers the intricacies of the Internet, like a website’s popularity, a
website’s character, or Internet-specific marketing avenues.
Regarding national, large-scale advertising in the brick-and-mortar
context, it is possible for a common-law trademark to acquire a nationwide
zone of protection.222 The determinations in early cases were highly factually
specific.223 In Travelodge Corp. v. Siragusa, 224 for example, a hotel was found to
have acquired nationwide geographic rights where it (1) used the mark for
more than eight years; (2) spent in excess of $3,500,000 on advertising; (3)
distributed more than three million of its self-published directories, not
including its listings in third-party directories and materials; and (4) appeared
in nearly 2000 U.S. billboards and national magazine ads, including
“Newsweek, Business Week, Time, U.S. News and World Report, and
Holiday.” 225 It has been proposed that “[w]hen the traditional tests are
applied [in the Internet context], Internet use should be factored in and
weighed in the same way as are catalog telephone sales and traditional radio
and television advertising.”226
Such an approach, however, is inefficient and unworkable for several
reasons. First, the Internet potentially reaches many more people than
traditional mechanisms. 227 Second, the Internet provides more fluid
connections with putative customers—an individual may only hear a radio
advertisement once while driving in his vehicle, but that same individual can
visit a website several times per day. The possibility of multiple connections
with a putative customer can create a much more lasting impression. Third,
while fact-specific inquiries in Internet-based common-law trademark cases
are helpful, such analyses do not provide a framework through which to
categorize all of the evidence. Courts have largely remained silent on this
221. See Creasman, supra note 6, at 1029–32.

222. “The traditional notions of limited market area pervading the earlier cases dealing
with . . . trademarks are not persuasive in this day of modern communication and travel.”
Travelodge Corp. v. Siragusa, 228 F. Supp. 238, 243 (N.D. Ala. 1964).
223. See, e.g., id.; Quality Courts United, Inc. v. Quality Courts, Inc., 140 F. Supp. 341 (D.
Pa. 1956).
224. Travelodge Corp. v. Siragusa, 228 F. Supp. 238 (N.D. Ala. 1964).
225. Id. at 244.
226. MCCARTHY, supra note 7, § 26:30.50.
227. According to 2011 statistics, roughly 78% of Americans use the Internet. North
America, supra note 168. 80% of consumers report that they start with the Internet when
looking for a product or service. Kern Lewis, Should Small Businesses Still Book Yellow Page
Ads?, FORBES (Mar. 28, 2011), http://www.forbes.com/sites/kernlewis/2011/03/28/
should-small-businesses-still-book-yellow-page-ads/.

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
issue, and this silence has already led to inefficient and unpredictable
results. 228 A solution is needed, and as with most areas of the law, history
provides a useful starting point.
As noted earlier, courts have moved toward factor-based analyses when
identifying territorial zones in the brick-and-mortar context, and, logically, an
Internet-sensitive framework should follow suit. 229 Creasman has proposed a
five-factor test to determine the territorial zone of protection for common-
law trademarks used on the Internet:
(1) the volume of sales in an area,
(2) growth trends in that area,
(3) the extent of these sales as a function of the total market,
(4) dispersal of these sales points within a given area, and
(5) specific jurisdictional targeting.230
The Creasman test is useful because it is grounded in established case law
and begins to take into consideration the borderless nature of the Internet by
accounting for the jurisdictional scattering of sales created by an Internet
marketplace.
The first three factors stem from the Natural Footwear factors that courts
have already largely adopted. 231 Applying these factors will not require courts
to do any more than they are already bound to do in analyzing the scope of
protection for common-law trademarks.
228. See Burks & Lasater, supra note 18, at 350 (noting the inefficiency of “inconsistent
treatment of similarly situated litigants and inconsistent weighting of factors” when dealing
with such Internet-based common-law trademarks).
229. See discussion supra Section II.A.
230. Creasman, supra note 6, at 1033. This test is an amalgamation of the popular
Natural Footwear factors, general personal jurisdiction tests, and trademark infringement
standards. See id. at 1023–29. Another commentator has suggested a statutory revision to
determine whether a common-law trademark owner has established a bona fide use in
commerce sufficient to preclude others from using confusingly similar marks on the
Internet. See Burks & Lasater, supra note 18, at 351–53. This revision uses somewhat similar
language to the Creasman test, but it includes a “degree of online advertising” factor. Id. at
352. The commentator, however, does not substantively elaborate on the scope of such
advertising.
231. See discussion supra Subsection II.A.1. The Creasman test excludes as a
consideration the amount of advertising in the relevant area because, “unlike the bricks-and-
mortar situation in which these figures could simply be held against the volume of
advertising in an area to make an educated inference as to a company's reputation in that
area in a homogenous sense, the user-specific subjectivity of the Internet advertising
environment requires another approach.” Creasman, supra note 6, at 1031.

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
The fourth factor takes into consideration that Internet sales can occur
widely but not deeply.232 A trademark does not have to gain widespread
public recognition to acquire common-law trademark rights. 233 The
trademark’s use, however, must not be “sporadic, casual or transitory.” 234 For
example, our hypothetical Nebraska T-shirt company, MidWest, may sell
seven products in North Carolina through its website, but these sales are
probably not sufficient to establish a zone of reputation if MidWest makes
one sale each in Boone, Elizabeth City, Beaufort, Tabor City, Charlotte,
Murphy, and Raleigh.235 On the other hand, if all of MidWest’s sales occur in
one neighborhood in Charlotte, a zone of reputation could possibly be
established in that area, particularly in conjunction with the other Creasman
factors. 236
The fifth factor, specific jurisdictional targeting, is the “keystone factor”
in the Internet context.237 This factor is borrowed from theories of general
personal jurisdiction.238 The basic rationale is that if a court may exercise
general personal jurisdiction over a trademark owner based on its Internet
activities, such activities can also establish a territorial zone of protection. 239
The glaring problem with this factor is that businesses create websites so that
they can reach a large segment of the consuming public without having to
target areas with radio ads, television commercials, or paper-based
marketing. 240
An updated model for establishing territorial zones based on Internet use
should note the uniqueness of each case but also consider the pragmatic
utility of the Internet. The facts considered in early court decisions can be
232. See Creasman, supra note 6, at 1031.

233. Blue Bell, Inc. v. Farah Mfg. Co., 508 F.2d 1260, 1265 (5th Cir. 1975).
234. Circuit City Stores, Inc. v. CarMax, Inc., 165 F.3d 1047, 1055 (6th Cir. 1999) (citing
La Société Anonyme des Parfums le Galion v. Jean Patou, Inc., 495 F.2d 1265, 1272 (2d Cir.
1974).
235. These cities are all roughly 150 to 200 miles apart within the state of North
Carolina and roughly outline the state’s border.
237. Id.
238. See id. at 1025–27.
239. While the Author disagrees with this contention to a certain extent (because of the
hypothetical posed in the previous paragraph), the parallels are unmistakable, and the factor
certainly provides the beginning of a useful framework for analyzing territorial zones of
trademark protection.
240. See Creasman, supra note 6, at 1031–32. Traditional advertising through print media,
direct mailings, or phone book ads can be cost-prohibitive and may also prohibit
personalization. Jeanette Mulvey, How Do I Advertise on the Internet on a Small Budget?,
BUSINESS NEWS DAILY (July 11, 2010), http://www.businessnewsdaily.com/12-small-
budget-advertising-intetnet-marketing.html.

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
distilled into a few critical categories, as articulated in both the Natural

Footwear and Creasman tests.
The Creasman test, however, does not explicitly consider the number of
visitors to a particular website or the amount of money spent on Internet-
specific marketing tools like keyword advertising, search engine optimization,
email marketing, or social media. 241 These two factors are important to
consider in the Internet context because visitors, regardless of their status as
purchasers, are exposed to a trademark and its corresponding goods and
services each time they visit a website.242 In addition, Internet-specific
marketing could significantly increase the number of visitors to a website and
thus the amount of exposure a trademark receives.243 Echo Drain, one of the
few cases to actually analyze Internet-based territoriality, offers some
guidance in this arena. 244 The court essentially applied a historical fact-
intensive inquiry in finding that Echo Drain had not established a territorial
zone outside of Dallas. 245 In particular, the court looked at Echo Drain’s
expansion efforts, both affirmative and entertained, as well as its website
visitors. 246
In addition to these considerations, the purpose and character of the
website is also relevant. Websites essentially fall on a spectrum, and one
scholar has articulated this website spectrum as encompassing three different
categories: “(1) a national, non-local content website, (2) an exclusively local-
content website, and (3) a combination national and local-content
website.” 247 Though there are certainly gray areas, it is relatively easy to
contemplate which websites fall at the beginning and end of the spectrum.
For example, a national, non-local content website would be
Cheezburger.com, an Internet meme website featuring humorous, captioned
photos of cats called “Lolcats.” 248 Visitors, regardless of geographical
241. All of these tools help businesses reach a larger number of customers to attract
website visitors and convert these visits into purchases. See generally ALAN CHARLESWORTH,
INTERNET MARKETING: A PRACTICAL APPROACH (2009).
242. Perhaps one visit to a website would not create the type of lasting mental
impression necessary to establish goodwill, but over time such exposure could prove
sufficient to establish common-law trademark rights.
243. See Nupp, supra note 195, at 660 (arguing that “the main objective of every website
operator is to get his site listed prominently on as many different keyword search lists on as
many different search engines as possible”).
244. Echo Drain v. Newsted, 307 F. Supp. 2d 1116 (C.D. Cal. 2003).
245. See id. at 1127–28.
246. Id. at 1128.
247. Barrett, supra note 43, at 701.
248. See Jessica Aldred et al., The World’s 50 Most Powerful Blogs, THE GUARDIAN (Mar. 8,
2008), http://www.theguardian.com/technology/2008/mar/09/blogs/.

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
location, are invited to “see, create, submit and vote on Lolcats.” 249 As of
December 2013, Cheezburger.com is the twelfth most popular blog on the
Internet with an estimated 6.5 million unique monthly visitors. 250 On the
other end of the website spectrum, an example of an exclusively local-
content website is the website of a city’s Chamber of Commerce. 251 The
information on this kind of website would mostly concern local businesses in
local towns and cities. 252 A combination national/local content website
would likely require a fact-intensive analysis that extrapolates and compares
the type of information posted on that website. 253
A new test that identifies the territorial limits of common-law trademarks
used on the Internet should build on the traditional analyses but provide
fluidity for technological concerns. Because the Internet is simultaneously
everywhere and nowhere, its users can become immediately connected to the
marketplace, or completely ignore that marketplace. Because common law
protection for trademarks subsists only in the areas in which customers
recognize the mark as identifying that particular business, 254 the overarching
and determinative consideration lies in the minds of those
customers/Internet visitors. Though scant case law exists addressing
common-law trademarks in the Internet context, at least one court has seen
this consideration as critical. 255 In Echo Drain, the court explicitly noted:
Although Echo Drain has a website, Echo Drain offers no
evidence that people outside of the Dallas–Fort Worth area have
accessed the website, downloaded performances from the website,
or even posted messages to the website. . . . Accordingly, even if
Echo Drain was able to prove that it had a protectable trademark,
its rights in that mark would not extend beyond the Dallas–Fort
Worth, Texas area. 256
Building on Echo Drain’s starting point, a new test should essentially ask
one question: has there been trademark use, or penetration, sufficient to
249. See id.

250. Top 15 Most Popular Blogs—December 2013, EBIZMBA.COM, http://www.ebizmba.
com/articles/blogs (last visited Dec. 10, 2013) (deriving rankings from Alexa Global Traffic
Rank and U.S. Traffic Rank from Compete and Quantcast).
251. See Barrett, supra note 43, at 701–02.
252. Id. at 701 (noting that a “target audience” analysis may be useful).
253. Referring back to the opening hypothetical, supra Part I, perhaps MidWest would
fall into this category. Its website would presumably highlight its brick-and-mortar location
in Omaha, Nebraska, but it would also allow customers from all states to purchase products.
Much of this kind of balancing analysis would turn on the literal features of the website.
254. Creasman, supra note 6, at 1016.
255. Echo Drain v. Newsted, 307 F. Supp. 2d 1116 (C.D. Cal. 2003).
256. Id. at 1128.

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
create a lasting impression in the consumer’s mind in the relevant geographical

region?257 Though unarticulated, the early decisions contemplating the
geographical scope of common-law trademarks hinge on whether the
trademark owner has created a lasting impression in enough consumer minds
to create goodwill, whether accomplished through sales, television, radio, the
Internet, or some other means.258
In establishing a common-law trademark’s territory through Internet
usage, courts may use the following non-exhaustive list of factors to answer
the overarching question of whether there exists a lasting impression. This
test builds on the Creasman test: the first five factors are those outlined in
the Creasman test, 259 and the final four factors provide specific Internet-
related considerations that have yet to be clearly articulated by scholars or
courts:
(4) dispersal of these sales points within a given area,
(5) specific jurisdictional advertising,
(6) the amount and manner of Internet advertising,
(7) the length and manner of Internet presence,
(8) the purpose and character of the Internet presence, and
(9) the number of unique monthly Internet visitors.
This list encompasses earlier scholarly suggestions but adds new Internet-
specific dimensional components. As with the Creasman test, these nine
factors should be considered on a case-by-case basis to allow maximum
flexibility. 260 While such an extensive list of factors may initially seem
unwieldy, courts are already required to consider some of these factors in
257. This all-encompassing question notes the importance of the traditional “zone of
actual goodwill,” as defined through market penetration, reputation, or both.
258. See supra Section III.A. Perhaps sensory impressions play a critical role here. For
example, it is well settled that brick-and-mortar interactions create goodwill. This could be
because the consumer has used many of her five senses in interacting with the product
bearing the trademark: sight in viewing the product, hearing in speaking with/interacting
with the salespersons in the store, and touch in picking the product up with her hands. The
Internet, on the other hand, typically involves only the sense of sight, and typically only for a
brief period of time. This fleeting moment, by itself, may not be enough to create a
memorable, lasting impression.
259. See Creasman, supra note 4, at 1031. The fifth factor will likely be irrelevant for
small businesses and startups. Generally, these types of companies by their very nature lack
the resources for large campaigns in print or traditional media.

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
traditional trademark cases involving distinctiveness,261 secondary meaning, 262

infringement, 263 market penetration, 264 and dilution. 265
This new proposal provides an updated framework for attorneys, courts,
and the legislature working to reconcile trademark common law with Internet
usage, and it emphasizes that the evidence must be comprehensively analyzed
to determine the existence of a lasting impression in the minds of consumers.
B. A MIDDLE-GROUND APPROACH TO CONCURRENT USE
Outlining the geographical parameters of common-law trademark
protection is merely the first obstacle. The second obstacle for many
trademark owners (both common-law trademark owners and holders of
federally registered marks) is that of concurrent Internet use. The question of
concurrent Internet use will become more pervasive as businesses continue
to use websites to connect with and sell to consumers. Since multiple parties
may use the same mark for the same products in a different geographic area,
the concurrent-use doctrine absorbs at least some amount of consumer
confusion. 266 However, the Internet adds a unique dimension to concurrent
use because it is not a physical body of land to be sectioned or delimited. 267 A
company in New York can reach consumers in California just as easily as it
can in Brooklyn through its website. When two companies have concurrent
trademark rights in the same trademark, it is presently unclear whether one
party must be precluded from using that trademark on the Internet. There is
scant precedent on this issue. Only a handful of federal courts have explicitly
acknowledged the issue at all, and the dicta conflict. Some courts find it
inequitable to preclude trademark owners from capitalizing on a wide-
reaching but inexpensive marketing channel, while others cannot envision a
261. See DeGidio v. West Grp. Corp., 355 F.3d 506, 510 (6th Cir. 2004); Abercrombie &
Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976).
262. See Int’l Kennel Club of Chi., Inc. v. Mighty Star, Inc., 846 F.2d 1079, 1085 (7th
Cir. 1988); Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 795 (5th Cir.
1983).
263. See Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961); see also
GINSBURG ET AL., supra note 45, at 334 (outlining all of the circuit tests for trademark
infringement).
264. See Natural Footwear Ltd. v. Hart, Schaffner & Marx, 760 F.2d 1383, 1398–99 (3d
Cir. 1985); Sweetarts v. Sunline, Inc., 380 F.2d 923, 929 (8th Cir. 1967).
265. See 15 U.S.C. § 1125(c) (2012).
266. See Harrods Ltd. v. Sixty Internet Domain Names, 302 F.3d 214, 233 (4th Cir.
2002); Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1054 (9th Cir.
1999).
267. See Dudley v. Healthsource Chiropractic, Inc., 883 F. Supp. 2d 377, 394 (W.D.N.Y.
2012).

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
system that allows confusingly similar marks to simultaneously exist on the

Internet.
Coupling current case law with the earlier analogy to national, large-scale
print, radio, and television advertising, this Section proposes that the
concurrent-use doctrine can indeed survive in an Internet-driven world.
Likening Internet usage to national advertising provides a useful starting
point. When faced with large-scale use of a common-law trademark, courts
have permitted the owners of such marks some form of national advertising,
even where another (and usually senior) party has a smaller territorial zone of
trademark protection.268 In V & V Food Products, Inc. v. Cacique Cheese Co.,
Inc., 269 for example, V & V established common-law trademark rights in
Illinois, Wisconsin, Indiana, and Michigan in the mark RANCHERITO in
the mid-1970s. 270 In 1981, Cacique applied for and received a federal
registration for RANCHERO. 271 Cacique was at first permanently enjoined
from using RANCHERO or RANCHERITO in Illinois, Wisconsin, Indiana,
and Michigan, 272 but later requested a modification of the injunction
following the advent of national Spanish-language network television
channels. 273 The court modified the injunction and allowed Cacique to
purchase national ads from such networks because to hold otherwise would
have been impractical, inequitable, and unfair. 274 The creation of nationwide
Spanish language television was not a technology contemplated by the judge
when he entered the original injunction, and the injunction would prohibit
Cacique from reaching this new, widely dispersed customer base. 275
268. See, e.g., Allard Enters., Inc. v. Advanced Programming Res., Inc., 249 F.3d 564, 572
(6th Cir. 2001) (finding that the lower court should consider allowing the junior to use a
confusingly similar trademark on the Internet); Thrifty Rent-A-Car Sys., Inc. v. Thrift Cars,
Inc., 831 F.2d 1177, 1182–84 (1st Cir. 1987) (allowing a senior user to continue nationwide
advertising but enjoining advertising directed at a junior user’s territorial zone of trademark
protection); Tree Tavern Prods., Inc. v. ConAgra, Inc., 640 F. Supp. 1263, 1273 (D. Del.
1986) (permitting nationwide advertising while simultaneously enjoining sales in another
party’s territorial zone of trademark protection).
269. V & V Food Products, Inc. v. Cacique Cheese Co., Inc., No. 86 C 8695, 2003 WL
255235 (N.D. Ill. Feb. 4, 2003).
270. Id. at *1.
271. Id. The parties stipulated that the two marks were confusingly similar. Id.
272. Id.
273. Id. at *3.
274. See id. at *9. Cacique was still precluded from selling products in V & V’s territorial
zone of protection, but the court noted that the issuing judge had not originally considered
the impact of advertising, but not selling, products in geographical areas. Id. at *10–11.
275. Id. at *9 (noting that Cacique could “lose market share in the forty-six states where
its rights are superior to V & V’s”).

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
As previously discussed, federal courts are in disagreement regarding

whether a similar line of reasoning should apply in the Internet context. 276 In
directly addressing the range of issues involved, one court has noted:
If . . . a senior common law user [within a limited territorial zone of
trademark protection] could claim exclusive use on the [I]nternet,
then it would undermine the benefits and security provided by
federal registration. A federal registrant could never be certain that
its rights extended to the [I]nternet and that a senior user would
not come forward claiming priority and exclusivity to the [I]nternet.
Similarly, allowing a federal registrant exclusive use of the mark on
the [I]nternet would undermine the territorial rights of a senior
user. Unlike national advertising which would often be cost-
prohibitive for a local or regional user, the [I]nternet is an almost-
necessary tool for a user to develop its business and remain
competitive within its exclusive territory. Restricting [I]nternet use
to the federal registrant would therefore equally undermine the
territorial rights of a senior common law user. 277
Such ambiguity, if unaddressed, will create a nearly impenetrable body of
case law and policy concerns. In addition, each court’s decision will apply
beyond the jurisdictional reach of precedent to the borderless Internet. 278
A middle ground exists between these two extremes, one that is based on
a comparison to early nationwide advertising cases.279 Upon adjudication of
the scope of territorial protection of a common-law trademark, courts should
apply a “concurrent Internet use doctrine” which provides that (1) both
trademark owners should conspicuously place a disclaimer on the relevant
product or sales pages noting where products are available (in the case of a
limited territorial zone) or not available (in the case of advertising based on
nationwide use or federal registration), and (2) use on the Internet should not
be permitted to extend into another party’s territorial zone in bad faith. 280
276. See discussion supra Section III.B.

2012).
278. Scholars have documented the dangers in allowing jurisdictionally restricted laws to
impact the Internet in other contexts. See, e.g., Xuan-Thao N. Nguyen, The Digital Trademark
Right: A Troubling New Extraterritorial Reach of United States Law, 81 N.C. L. REV. 483 (2003)
(arguing that the 1999 Anticybersquatting Protection Act illegally expands American
trademark law beyond the appropriate territorial boundaries).
279. See, e.g., Flavor Corp. of America v. Kemin Indus., Inc., 503 F.2d 729 (8th Cir.
1974).
280. Bad faith, as used in this context, is defined as intent to expand use of the mark(s)
at issue beyond geographically restricted areas. See Harrods Ltd. v. Sixty Internet Domain
Names, 302 F.3d 214, 234 (4th Cir. 2002).

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
Other approaches have been proposed. Some scholars have suggested a

statutory revision based on the Natural Footwear factors that provide Internet
rights to one party if it files a trademark application within a specific
period. 281 Other proposed remedies include placing a disclaimer to indicate
that one party is not connected to another, linking to a neutral site that
outlines the concurrent use terms, manipulating search engines so that parties
appear in close proximity in search results, or creating geographic-specific
top-level domains.282
Regarding the use of disclaimers, such an approach has support in the
case law. In Flavor Corp. of America v. Kemin Industries, Inc., 283 Flavor Corp.
owned established rights to the trademark PESTLUR in Georgia and Florida,
and Kemin acquired common-law trademark rights in the confusingly similar
trademark LURE in ten other states. 284 Kemin was enjoined from competing
with Flavor Corp. in Georgia and Florida, but it requested permission to use
LURE in national advertising. 285 In noting that Kemin must be allowed to
use modern marketing techniques, the court held that Kemin could use
LURE in national advertising, but that it must conspicuously include the
following statement: “This product is not available in Georgia and
Florida.” 286
The main objection to this type of approach stems from concerns of
consumer confusion. A search performed using any of the various search
engines could bring up both concurrent users and effectively push one
concurrent user out of the market. 287 A consumer may also assume that the
name of a business or product forms the basis of the domain name and
merely type www.[trademark].com into the browser address bar, only to be
led to a concurrent user (or an entirely different party altogether). A
likelihood of confusion is the touchstone of trademark infringement, and
allowing concurrent Internet use could lead to a situation where a
281. See Burks & Lasater, supra note 18, at 347–57.

282. Nupp, supra note 195, at 651–66.
283. Flavor Corp. of America v. Kemin Industries, Inc., 503 F.2d 729 (8th Cir. 1974).
284. Id. at 730–31.
285. Id. at 731.
286. Id. at 731–33. The court noted that to hold otherwise would “preclude Kemin from
advertising in national publications intended to reach the remaining 48 states in which it had
a clear right to advertise.” Id. at 732.
287. See, e.g., Dudley v. Healthsource Chiropractic, Inc., 883 F. Supp. 2d 377, 395
(W.D.N.Y. 2012).

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
confusingly similar trademark is used to market or advertise products in a

jurisdiction where consumers cannot purchase those products. 288
There is some merit to this type of objection. One of the critical factors
in analyzing a likelihood of confusion is the degree of sophistication of the
relevant consumers. Confusion is more likely where an average,
unsophisticated consumer is involved, because that person will not exercise a
high degree of care in making a purchase. 289 Several jurisdictions have
described the typical Internet user as being the least sophisticated consumer
possible. 290 The Ninth Circuit, for example, has stated:
In the Internet context, in particular, entering a web site takes little
effort—usually one click from a linked site or a search engine’s list;
thus, Web surfers are more likely to be confused as to the
ownership of a web site than traditional patrons of a brick-and-
mortar store would be of a store’s ownership. 291
However, this view is changing because consumer behaviors have also
changed. 292 Internet users are quickly becoming savvier when it comes to
searching and shopping for goods and services on the Internet. 293 Internet
288. See, e.g., V & V Food Prods., Inc. v. Cacique Cheese Co., Inc., No. 86 C 8695, 2003
WL 255235, at *10 (N.D. Ill. Feb. 4, 2003). This may, of course, depend on the purpose and
character of the website mentioned earlier in this Article. See discussion supra Section IV.A.
289. See Playboy Enters., Inc. v. Netscape Commc’ns Corp., 354 F.3d 1020, 1028 (9th
Cir. 2004) (“Low consumer care . . . increases the likelihood of confusion.”); see also Grey v.
Campbell Soup Co., 650 F. Supp. 1166, 1175 (C.D. Cal. 1986), aff’d, 830 F.2d 197 (9th Cir.
1987); Toys “R” Us, Inc. v. Canarsie Kiddie Shop, Inc., 559 F. Supp. 1189, 1199 (E.D.N.Y.
1983).
290. Compare GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1209 (9th Cir. 2000)
(“Although the use of computers may once have been the exclusive domain of an elite
intelligentsia, even modern-day Luddites are now capable of navigating cyberspace.”), and
Ford Motor Co. v. Summit Motor Prods., Inc., 930 F.2d 277, 293 (3d Cir. 1991) (finding that
“the standard of care to be exercised by the reasonably prudent purchaser will be equal to
that of the least sophisticated consumer”), with Alta Vista v. Digital Equip. Corp., 44 F.
Supp. 2d 72, 78 (D. Mass. 1998) (noting that individuals who use the Internet are
sophisticated), and Toys “R” Us v. Feinberg, 26 F. Supp. 2d 639, 643 (S.D.N.Y. 1998)
(“Consumers looking at defendants’ website are [I]nternet users and, presumably,
sophisticated.”).
291. Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1057 (9th
Cir. 1999).
292. Scholars have suggested that “the Internet forces one to be more inquisitive and
certain that the website found sells the items, or is the business sought.” Barrett, supra note
43, at 716.
293. Indeed, even courts that attribute low levels of sophistication to Internet users have
noted that “[o]ur ever-growing dependence on the Web may force us eventually to evolve
into increasingly sophisticated uses of the medium . . . .” GoTo.com, 202 F.3d at 1206.

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
users are adept at using search engines to locate things on the Internet. 294
Indeed, the overwhelming majority of people using search engines find the
information they are looking for. 295 Courts have acknowledged that the
increasing prevalence of an Internet-based marketplace is eroding the view
that Internet users are unsophisticated purchasers who exercise a low degree
of care. 296
Since the Internet is global in scope, Internet users encounter a plethora
of products, services, and companies. Internet users are unlikely to assume
that each website shown in their search results is relevant to the product it is
trying to find. As noted in Toyota Motor Sales v. Tabari, Internet users “skip
from site to site, ready to hit the back button whenever they’re not satisfied
with a site’s contents.” 297 They do not assume anything in particular about
the source or sponsorship of a particular website until they browse that
site. 298 In some instances, separate and distinct websites dispel any possible
confusion that might exist when parties use confusingly similar trademarks
on the Internet. 299 At least one court has suggested that common-law
trademark owners “must develop ways to distinguish themselves on the
[I]nternet beyond resorting to trademark law.” 300
To the extent that an Internet user might be confused, this is likely not
the type of actionable confusion that trademark law typically prohibits. 301
Trademark law must absorb a certain amount of confusion in the Internet
294. The Pew Research Center has consistently found that most Americans spent quite
a bit of time using search engines, and the number of people using search engines has
increased significantly. Kristen Purcell, Joanna Brenner & Lee Rainie, Search Engine Use 2012:
Summary of Findings, PEW RESEARCH CENTER’S INTERNET & AMERICAN LIFE PROJECT,
available at http://www.pewinternet.org/Reports/2012/Search-Engine-Use-2012/Summary-
of-findings.aspx. In January of 2002, roughly half of all Americans used search engines. Id.
Ten years later, that number grew to 73%. Id.
295. Id. (“91% of search engine users say they always or most of the time find the
information that they are seeking when they use search engines.”).
296. See, e.g., Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137,
1152–53 (9th Cir. 2011).
297. Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1179 (9th Cir. 2010)
(referring to this type of activity as “sensible agnosticism, not consumer confusion”).
298. Id.
299. See, e.g., Tana v. Dantanna’s, 611 F.3d 767, 778 (11th Cir. 2010).
2012) (citing Lockheed Martin Corp. v. Network Solutions, Inc., 985 F. Supp. 949, 968 (C.D.
Cal. 1997), aff’d, 194 F.3d 980 (9th Cir. 1999)) (stating that the solution to difficulties faced
by trademark owners on the Internet is innovation).
301. See Lang v. Ret. Living Publ’g Co., Inc., 949 F.2d 576, 583 (2d Cir. 1991) (holding
that trademark infringement precludes “mistaken purchasing decisions and not against
confusion generally”).

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
context. 302 It is not designed to protect a trademark owner’s right to be the

only concurrent user whose website is listed in a search results list. 303
C. A PRAGMATIC EXAMPLE: COMMON-LAW TRADEMARK PROTECTION
AND CONCURRENT USE IN AN INTERNET ENVIRONMENT
Applying the proposed tests to the earlier SHINY FITS hypothetical,304 it

is necessary to first determine the territorial zone of protection established by
each party. Assuming MidWest has territorial trademark rights in Iowa,
Missouri, Kansas, and Nebraska, and Southern has territorial trademark
rights in South Carolina based on brick-and-mortar sales and physical
advertising in their respective locations, what is the impact of their
simultaneous Internet use? Common law dictates that Southern, as the senior
user, should be allowed to continue its use in South Carolina. However,
Southern should be limited from extending its business, at the very least, in
Iowa, Missouri, Kansas, and Nebraska. The two proposed tests, the “lasting
impression” test and the “concurrent-Internet-use doctrine,” can be used to
fill in the gaps in the Internet context.
First, the “lasting impression” test can be used to determine the scope of
common-law trademark protection in the remaining 45 states for Southern
and/or MidWest. In determining whether either party has established
common-law trademark rights, the court should consider evidence regarding:
(4) dispersal of these sales points within a given area,
(5) specific jurisdictional advertising,
(6) the amount and manner of Internet advertising,
(7) the length and manner of Internet presence,
(8) the purpose and character of the Internet presence, and
(9) the number of unique monthly Internet visitors.
302. Territorial zones must “accommodate reasonable intrusion when it becomes

impracticable to exclude another lawful user.” Dudley, 883 F. Supp. 2d at 394.
303. See id. at 395. This may be complicated by the legal doctrine of initial interest
confusion, in which infringement claims arise when there is temporary confusion that is
alleviated before the consumer buys a product. While courts apply initial interest confusion
in Internet cases, there is a growing sentiment that the doctrine should not apply on such a
rapidly moving medium. See, e.g., Stacey L. Dogan & Mark A. Lemley, Trademark and
Consumer Search Costs on the Internet, 41 HOUS. L. REV. 777 (2004). Such a wide-reaching
analysis is beyond the scope of this Article and will be addressed in later work.
304. See supra Part I.

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
While this test will not allow Southern to establish nationwide common-law
trademark rights in SHINY FITS merely by virtue of having an active
Internet presence, the test is flexible enough to accommodate other Internet-
based efforts to create goodwill on the part of either party.
Second, the “concurrent Internet use doctrine” can be used to discern
whether the two companies can exist simultaneously on the Internet. Under
this doctrine, both companies should be allowed to use the mark SHINY
FITS to sell their products, subject to two conditions: (1) both trademark
owners should conspicuously place a disclaimer on the relevant product or
sales pages noting where their products are available (in the case of a limited
territorial zone) or not available (in the case of advertising based on
nationwide use or federal registration), and (2) use on the Internet should not
be permitted to extend into another party’s territorial zone in bad faith. In
this particular case, Southern would be precluded from selling in the states
where MidWest has created common law rights and vice versa. 305
The goal of common-law trademark protection is to recognize the
goodwill built in the minds of consumers in a meaningful, lasting way, and
these two tests will assist businesses, courts, and practitioners as they grapple
with the modernization of the common law of trademarks.
V. CONCLUSION
The advent of the Internet has provided great benefits to both small and
large businesses. It was previously impossible for almost any company to
reach such a large customer segment without expending considerable time,
energy, and resources. Today, however, is a new day, and trademark law must
be revamped to accommodate such technological advancements. Early case
law crafted a body of common law that has assisted businesses seeking to
protect the goodwill created through trademark use in the marketplace. 306
The common law, however, has not kept pace with the lightning speed of
technological advancement. It has been slow to respond to the myriad
questions that will only become more frequent as companies continue to
enter cyberspace to transact business with customers at more rapid rates. 307
The new approach will provide guidance to companies who use this
305. While this result may seem harsh, these are the consequences that arise when
trademark owners do not avail themselves of federal registration mechanisms.
306. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918); Hanover Star
Milling Co. v. Metcalf, 240 U.S. 403 (1916).
307. See, e.g., Harrods Ltd. v. Sixty Internet Domain Names, 302 F.3d 214, 234 n.9 (4th
Cir. 2002); Allard Enters., Inc. v. Advanced Programming Res., 249 F.3d 564 (6th Cir. 2001).

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC
electronic, borderless medium, both in terms of protecting trademarks and of

subsequently sharing cyberspace with other companies, by providing clear
frameworks that consider the nuances of the Internet environment. While
questions still remain, 308 this framework will provide immediate direction for
courts struggling to reconcile history and technology, resulting in more
certainty and efficiency for trademark holders, courts, and attorneys.
308. For example, this Article assumes that the Internet cannot be divided or
compartmentalized into geographies. Future advancements may prove otherwise. In
addition, this Article utilizes the term “use” with a certain amount of fluidity. The trademark
use requirement has historically been under-analyzed by courts and may require significant
reconsideration in light of the Internet. See generally Margreth Barrett, Internet Trademark Suits
and the Demise of “Trademark Use,” 39 U.C. DAVIS L. REV. 371 (2006).

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC

103.68.37.134 on Tue, 19 May 2020 06:04:30 UTC

This Content Downloaded From 103.68.37.134 On Tue, 19 May 2020 06:04:30 UTC

Uploaded by

Copyright:

Available Formats

This Content Downloaded From 103.68.37.134 On Tue, 19 May 2020 06:04:30 UTC

Uploaded by

Document Information

Original Title

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

This Content Downloaded From 103.68.37.134 On Tue, 19 May 2020 06:04:30 UTC

Uploaded by

Copyright:

Available Formats

University of California, Berkeley, School of Law

Trademark Territoriality in Cyberspace: An Internet Framework for Common-Law

This content downloaded from

Trademark Territoriality in Cyberspace: an Internet

Follow this and additional works at: http://scholarship.law.berkeley.edu/btlj

Link to publisher version (DOI)

This content downloaded from

© 2014 Shontavia Johnson.

This content downloaded from

1. See THOMAS ELLIOTT, WEBSITE 411: BUSINESS SURVIVAL IN AN INTERNET

This content downloaded from

business, entities are increasingly more attuned to intellectual property

This content downloaded from

infringement. Southern contends that it has established nationwide rights in

4. See discussion infra Section II.A.

This content downloaded from

impact of the Lanham Trademark Protection Act of 1946 on the concurrent-

II. A HISTORY OF TRADEMARK LAW AND THEORY

6. W. Scott Creasman, Establishing Geographic Rights in Trademarks Based on Internet Use,

This content downloaded from

only travel as far as those goods or services bearing the corresponding

This content downloaded from

mark, however, the unregistered, common-law trademark is geographically

This content downloaded from

Where the zone of actual market penetration is limited, the zone of

This content downloaded from

system is shortsighted, however, when assessing the zone of actual goodwill

This content downloaded from

existing locations that expansion would be (or is) a logical, gradual,

This content downloaded from

41. Creasman, supra note 6, at 1017–20. Jurisdictions are inconsistent, however, on

This content downloaded from

This content downloaded from

The Lanham Act was created to provide greater consistency in a nation

This content downloaded from

This content downloaded from

69. Id. at 422.

This content downloaded from

preclude Hanover from using TEA ROSE in the southeastern states of

82. Id. at 412.

This content downloaded from

an articulable segment of possible customers. 88 A second case, United Drug

This content downloaded from

to build a viable, albeit localized, business in Louisville and the contiguous

This content downloaded from

This content downloaded from

Congress intended to reduce instances of, and the uncertainty associated

This content downloaded from

a) Dawn Donut Co., Inc. v. Hart’s Food Stores, Inc.

125. Dawn Donut, 267 F.2d at 360.

This content downloaded from

This content downloaded from

b) Thrifty Rent-a-Car System, Inc. v. Thrift Cars, Inc.

This content downloaded from

This content downloaded from

This content downloaded from

III. APPLYING TRADEMARK COMMON LAW PRINCIPLES

This content downloaded from

scholars address creating common-law trademark rights through Internet use