COMMENT: LOCATION? LOCATION? LOCATION?: A NEW SOLUTION TO CONCURRENT VIRTUAL TRADEMARK USE

11 Wake Forest J. Bus. & Intell. Prop. L. 329

Small or startup businesses have every incentive to put their products or services online. Furthermore, these businesses, in an effort to teach potential customers to recognize their goods or services, will almost invariably and prominently display their mark to put a name or design in customers’ minds that identifies the goods or services offered. While every business presumably understands the necessity of having a “brand,” some owners will begin using their mark on the Internet without registering it with the USPTO because they are ignorant of the ramifications of failing to register or because they lack the desire or resources to go through the application process. For those entrepreneurs that own small Internet companies, intellectual property rights are not likely foremost in their minds. Thus, one pressing question remains: does the Lanham Act, through its various Internet-related updates, accommodate a situation where a common law senior user has exploited the Internet to use his mark in commerce, and if so, have courts been able to craft a remedy when a junior good-faith user registers a substantially similar mark with the USPTO? Are the Lanham Act and the traditional foundations of trademark law still relevant since the great Internet migration began over twenty years ago?

This Comment argues that current trademark law in the United States is, at the least, inadequate and, at the most, inapposite to effectively and uniformly establish the divisions in possession of trademark rights between an Internet common law senior user and an Internet junior user that has registered the mark on the principal register. Part I discusses the Concurrent Use Doctrine as it existed both before and after the enactment of the Lanham Act in 1946 in order to set the legal context for concurrent Internet use problems. Part II explores the problems unique to concurrent trademark use on the Internet. Part III considers the scholarly works that have attempted to confront these issues with concurrent Internet trademark use. Finally, Part IV argues that the old geographic- and consumer-oriented trademark rationales cannot be imported to the Internet context because of online mark holders’ world-wide and instantaneous reach. Part IV goes on to suggest that this systemic problem can likely be remedied by enacting one or more reforms to address the reality of trademarks in the twenty-first century.