Trademark Territoriality in Cyberspace: an Internet Framework for Common-Law Trademarks

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. 1254 BERKELEY TECHNOLOGY LAW JOURNAL [Vol. 29:1253