Recommended Reading: LaLonde and Gilson, "Proving Ownership Online . . . And Keeping It: : The Internet’s Impact on Trademark Use and Coexistence"
In their latest contribution to the trademark literature and the Trademark Reporter, Ann Gilson LaLonde and Jerome Gilson ponder the effect of the Internet on the issue of trademark use, in Proving Ownership Online . . . And Keeping It: The Internet’s Impact on Trademark Use and Coexistence. Does the Internet change concurrent use proceedings? Priority based on use analogous to trademark use? What about technical trademark use? The courts and the TTAB have been grappling with these issues even since someone [Al Gore? Marty Schwimmer?] created the darn thing, as LaLonde and Gilson explain.
Over the past twenty-five years, give or take, the reality of trademark use has changed. Trademarks are no longer seen only on store shelves, shop windows, billboards and print media. They’re used on the Internet, in connection with websites, domain names, sponsored search engine ads, auction sites, e-mails, Tweets, Facebook posts, mobile apps and much more.
The Dawn Donut and Tea Rose-Rectanus doctrines and the concurrent use proceedings of the United States Patent and Trademark Office (USPTO) depend on geographic remoteness, which these days seems to be more and more of a fiction. Are 1Ls entering law school in the United States going to learn about those doctrines only as remnants of history? Will the USPTO need to abandon its concurrent use proceedings?
In this article, we ask how the vast communication system of the Internet has changed the concept of trademark use (or not) in a variety of contexts: the development of trademark rights, concurrent use, channels of trade in the likelihood of confusion
analysis, and use in interstate commerce.
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TTABlog note: Again I thank The Trademark Reporter for granting permission to provide links to these two commentaries, which are Copyright © 2014 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 106 TMR No. 6 (November-December 2014).
Text Copyright John L. Welch 2015.