[*]J.D. 1998, Boston College Law School. The author would like to thank the following people for their guidance with this paper: Assistant Professor Pamela Smith, Boston College Law School; John V. Ala, Esq., Thomson & Thomson; David Bender, Esq. and David Hatch, Esq., White & Case.

[1]The third exception, The Tea Rose/Rectanus Doctrine, is noted here but will not be discussed in this essay. This doctrine emerged from two landmark cases which helped define common law trademark territorial rights. See Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (1916) and United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918).

[2]See Hanover Star Milling Co., 240 U.S. at 404.

[3]See Thomas F. Cotter, Owning What Doesn't Exist, Where It Doesn't Exist: Rethinking Two Doctrines from the Common Law of Trademearks, 1995 U. ILL. L. REV. 487, 491-92 (1995) (citing 3 RUDOLF CALLMANN, THE LAW OF UNFAIR COMPETITION, TRADEMARKS AND MONOPOLIES, § 19.19, at 82 (1994)).

[4]See The Trademark Cases, 100 U.S. 82, 94 (1879) cited in Hanover Star Milling Co., 240 U.S. at 413.

[5]Natural Footwear v. Hart, 760 F.2d 1383 (3d Cir. 1985).

[6] Id. at 1391-94 (In total, Plaintiff spent a great deal of money on television advertising, placed advertisements in 5 major newspapers, and also in 12 periodicals with national circulation.).

[7]"Domain (names) are similar to street addresses in that it is through (a) domain address that Internet users find one another. A domain (name) consists of three parts: the first one identifies the part of the Internet desired, such as the World-Wide-Web (www); the second part is usually the name of a company or other identifying words; the third part identifies the type of institution, such as "government" (.gov) or "commercial" (.com), etc. If a company uses a domain which is identical to the name or trademark of a company, an Internet user may inadvertently access an unintended company. Thereafter, the Internet user may not realize that the advertisement is actually from an unintended company, or the Internet user may erroneously assume that the source of the information is the intended company. As a result, confusion in the marketplace could develop." See Inset Systems v. Instruction Set, Inc., 937 F. Supp. 161, 163 (D. Conn. 1996).

[8]The administrative policies of Network Solutions Inc. are controversial, and will not be discussed in this essay.

[9]"These individuals attempt(ed) to profit from the Internet by reserving and later reselling or licensing domain names back to the companies that spent millions of dollars developing the goodwill of the trademark." Intermatic, Inc. v. Toeppen, 947 F. Supp. 1227, 1233 (N.D. Ill. 1996).

[10]See, e.g., MTV Networks v. Curry, 867 F. Supp. 202 (S.D.N.Y. 1994) (using the mark "MTV" in the domain name "mtv.com"); American Standard v. Toeppen, 1996 U.S. Dist. LEXIS 14451 (C.D. Ill. Sept. 3, 1996) (using the mark "American Standard" in the domain name "americanstandard.com"); Intermatic, Inc. v. Toeppen, 947 F. Supp. 1227 (N.D. Ill. 1996) (using the mark "Intermatic" in the domain name "intermatic.com"); Panavision v. Toeppen, 945 F. Supp. 1296 (C.D. Cal. 1996) (using the mark "Panavision" in the domain name "panavision.com"); Teletech v. Tele-Tech, 42 U.S.P.Q.2d (BNA) 1913 (C.D. Cal. 1996) (using the mark "Teletech" in the domain name "teletech.com").

[11]See, e.g., Actmedia v. Active Media Int'l., 1996 U.S. Dist. LEXIS 20814 (N.D. Ill. July 12, 1996) (using the mark "Actmedia" in the domain name "actmedia.com"); Hasbro v. Internet Entertainment Group, 40 U.S.P.Q.2d 1479 (W.D.Wash. 1996) (using the mark "Candyland" in the domain name "candyland.com"); Toys "R" Us v. Akkaoui, 40 U.S.P.Q.2d 1836 (N.D. Cal. 1996) (using the domain name "adultsrus.com").

[12]See Intermatic, Inc., 947 F. Supp. at 1231 ("One way to establish a presence on the Internet is by placing a web page, which is, ultimately, a computer data file on a host operating a web server within a given domain name . . . . There are a number of ways for an Internet user to find a web page. Web browsers feature access to various indexes, commonly referred to as search engines.")

[13]See American Network v. Access America, 975 F. Supp. 494, 495 (S.D.N.Y. 1997).

[14]"For a domain name to be registerable in the PTO, it must be used as a trademark or service mark in a conspicuous manner that identifies the source, origin, sponsorship, or affiliation of a particular set of goods or services." Gary W. Hamilton, Trademarks on the Internet: Confusion, Collusion, or Dilution?, 4 TEX. INTELL. PROP. L.J. 1, 5 n.10 (1995) (citing INTA's Special Bulletin: Registration of Internet Domain Names in the USPTO, (1995)).

[15]See Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 412 (1916).

[16]See Sweetarts v. Sunline, Inc., 380 F.2d 923, 929 (8th Cir. 1967).

[17]See Natural Footwear v. Hart, 760 F.2d 1383, 1397 (3d Cir. 1985).

[18]Id. at 1398. For similar tests evaluating market penetration, see Sweetarts v. Sunline, Inc., 380 F.2d at 929; Weiner King, Inc. v. Wiener King Corp., 615 F.2d 512, 522 (C.C.P.A. 1980).

[19]See Alexander & Coil, Geographic Rights in Trademarks and Service Marks, 68 Trademark Rep. 101, 105 (1978).

[20]See Stork Restaurant v. Sahati, 166 F.2d 348 (9th Cir. 1948).

[21]See William J. Gross, Comment, The Territorial Scope of Trademark Rights, 44 U. MIAMI L. REV. 1075, 1085 (1990).

[22]A complete analysis of personal jurisdiction will likely focus on the following cases: International Shoe v. Washington, 326 U.S. 310 (1945); Travelers Health Ass'n. v. Virginia, 339 U.S. 643 (1950); Hanson v. Denckla, 357 U.S. 235 (1958); World Wide Volkswagen v. Woodson, 444 U.S. 286 (1980); Helicopteros Nacionales v. Hall, 466 U.S. 408 (1984); Burger King v. Rudzewicz, 471 U.S. 462 (1985);

[23]See e.g., American Network v. Access America, 975 F. Supp. 494 (S.D.N.Y. 1997) (using New York's Long-Arm Statute); State of Minnesota v. Granite Gate Resorts, 568 N.W.2d 715 (Minn. Ct. App. 1997) (using Minnesota's Long-Arm Statute); Haelan Products Inc. v. Beso Biological, 43 U.S.P.Q.2d 1672 (E.D. La. 1997) (using Louisiana's Long-Arm Statute); Digital Equip. v. AltaVista, 960 F. Supp. 456 (D. Mass. 1997) (using Massachusett's Long-Arm Statute); Zippo v. Zippo Dot Com, 952 F. Supp. 1119 (W.D. Pa. 1997) (using Pennsylvania's Long-Arm Statute); Edias Software v. Basis Int'l., 947 F. Supp. 413 (D. Ariz. 1996) (using Arizona's Long-Arm Statute).

[24]See, e.g., CD Solutions v. Tooker, 965 F. Supp. 17 (N.D. Tex. 1997); Hearst Corp. v. Goldberger, No. 96CU3620, 1997 U.S. Dist. LEXIS 2065 (S.D.N.Y. Feb 26, 1997); Bensusan Restaurant v. King, 937 F. Supp. 295 (S.D.N.Y. 1996), aff'd, 126 F.3d 25 (2d Cir. 1997).

[25]American Network v. Access America, 975 F. Supp. 494 (S.D.N.Y. 1997).

[26]Haelan Products Inc. v. Beso Biological, 43 U.S.P.Q.2d 1672 (E.D. La. 1997).

[27]See Cotter, supra note 3, at 493.

[28]There seems to be no established rule for setting the geographic boundaries of a "Zone of Natural Expansion." The Eleventh Circuit has stated that their assumption is that "the distances (will not be) great" from the initial "Zone of Actual Goodwill". At the same time, however, it concedes that "there are very few firm guidelines to define (a) senior user's imaginary "Zone of Natural Expansion". See Tally-Ho, Inc. v. Coast Community College Dist., 889 F.2d 1018, 1028 (11th Cir. 1989).

[29]See id. (citing 3 J. THOMAS MCCARTHY, TRADEMARKS AND UNFAIR COMPETITION, § 26.09 (3d ed. 1992)).

[30]Weiner King, Inc. v. Wiener King Corp., 615 F.2d 512, 522 (C.C.P.A. 1980).

[31]Id. at 523.

[32]Pedi-Care, Inc. v. Pedi-A-Care Nursing, Inc., 656 F. Supp. 449 (D.N.J. 1987).

[33] Id. at 456.

[34]Tally-Ho, Inc. v. Coast Community College Dist., 889 F.2d 1018 (11th Cir. 1989).

[35]Id. at 1028.

[36] See Pedi-Care, Inc., 656 F. Supp. at 456.

[37]"As the Internet grows in prominence as a venue for business, the courts will be called upon to apply traditional legal principles to new avenues of commerce." See Intermatic, Inc. v. Toeppen, 947 F. Supp. 1227, 1229 (N.D. Ill. 1996).

[38]See Reno v. ACLU, 117 S. Ct. 554 (1996) ("The Internet has experienced 'extraordinary growth.' The number of 'host' computers - those that store information and relay communications - increased from about 300 in 1981 to approximately 9,400,000 in 1996. Roughly 60% of these hosts are located in the United States. About 40 million people used the Internet at the time of trial, a number that is expected to mushroom to 200 million by 1999.") (summarizing findings of fact made by the District Court in Reno v. ACLU, 929 F. Supp. 824, 831 (E.D. Pa. 1996).

[39]"An estimated 25 million individuals have some form of Internet access, and this audience is doubling each year." Bensusan Restaurant Corp. v. King, 937 F. Supp. 295, 297 n.1 (S.D.N.Y. 1996), aff'd, 126 F.3d 25 (2d Cir. 1997).

[40]See Network Solutions Announces Third Quarter Revenue and Earnings, para. 7 (last modified Oct. 30, 1997) <http://www. netsol.com/news/pr_19971030.html>.

[41]See Gross, supra note 21, at 1087-89.

[42]For a discussion regarding the lack of territorial borders in cyberspace, see David R. Johnson and David Post, Law and Borders - The Rise of Law in Cyberspace, 48 STAN. L. REV. 1367 (1996).

[43]See Gross, supra note 21, at 1087-89.

[44] RUDOLF CALLMANN, THE LAW OF UNFAIR COMPETITION, TRADEMARKS, AND MONOPOLIES, § 19.21, at 95 (1994) (quoting Eastern Outfitting Co. v. Manheim, 110 P. 23, 25 (Wash. 1910)).

[45]See Gross, supra note 21, at 1115.

[46]See Mary Kathleen Flynn, A Tiny Winery's Giant Reach, U.S. NEWS & WORLD REP., Oct. 30, 1995, at 84.

[47]See Reno v. ACLU, 117 S. Ct. 554 (1996).

[48]See Intermatic, Inc. v. Toeppen, 947 F. Supp. 1227, 1235 (N.D. Ill. 1996).

[49]See Panavision v. Toeppen, 945 F. Supp. 1296, 1299 (C.D. Cal. 1996).

[50]The author recognizes that there does exist a potential conflict of law with regard to intra-state trade versus inter-state commerce. Although relevant, this essay does not endeavor to discuss this aspect of Internet usage.

[51] U.S.C. §§ 1051-1127 (1988).

[52]See Gross, supra note 21, at 1090.

[53]See Natural Footwear v. Hart, 760 F.2d 1383, 1395 (3d Cir. 1985) (citing Burger King v. Hoots, 403 F.2d 904, 908 (7th Cir. 1968)).

[54]A "senior user" is the first person in time to use a trademark, whether it is a common law mark or federally registered. A "junior user" is any person who subsequently uses the same mark, whether in a common law or federally registered capacity.

[55]See Burger King v. Hoots, 403 F.2d 904 (7th Cir. 1968); Weiner King v. Wiener King, 201 U.S.P.Q. 894 (TTAB 1979); Nark Inc. v. Noah's Inc., 212 U.S.P.Q. 934 (TTAB 1981), aff'd, 728 F.2d 410 (8th Cir. 1984); GTE Corp. v. Williams, 649 F. Supp. 164 (D. Utah 1986), aff'd, 940 F.2d 536 (10th Cir. 1990).

[56]Natural Footwear, 760 F.2d at 1383 (1985).

[57] See id. at 1386-1391.

[58]In this case, the Third Circuit reversed the decision of the District of New Jersey, which granted a permanent nationwide injunction against the plaintiff and ordered the cancellation of its federally registered trademark, based on a judgement that the defendant had shown prior continuous use of its common law mark on a nationwide level. The Third Circuit found that although the defendant had superior common law rights within New Jersey, it did not have superior rights in any other state.

[59]See id. at 1397 (citing 15 U.S.C. § 1115(b)(5)).

[60] Id. at 1397 (quoting Sweetarts v. Sunline, Inc., 380 F.2d 923, 929 (8th Cir. 1967)).

[61]See id. at 1398-99. These four factors come from a combination of two similar tests cited in Sweetarts v. Sunline, Inc., 380 F.2d at 929 (1967) and Weiner King, Inc. v. Wiener King Corp., 615 F.2d 512, 522 (C.C.P.A. 1980).

[62]By "cybermarket," the author simply means that, in accordance with Natural Footwear, the defendant could prove he 1) sold a trademarked product over the Internet, 2) could calculate growth trends (both good and bad) from his online sales, 3) could calculate the number of persons actually purchasing his product online in relation to the potential number of Internet users, and 4) did product advertising over the Internet.

[63]See supra note 58.

[64]In Natural Footwear, the Third Circuit acknowledged that a common law mark had a protectable right outside its home state, or in any state where it could pass the aforementioned test. In fact, the issue in this case was whether the defendant had protectable trademark rights in both New York and Pennsylvania, as well as New Jersey.

[65]This implication disregards any argument that a nationwide customer base via the Internet would not be possible, for the author believes that it easily would be. Assume, hypothetically, that the "AltaVista" mark (or a similar type mark) was not federally registered, but instead was a common law mark.

[66]The author understands that a preemption issue could exist here, but does not endeavor to address it in this essay. More specifically, common law trademark rights are grounded in state law, whereas trademark rights under the Lanham Act are grounded in federal law by means of the Commerce Clause power. The issue appears to be a problem in differentiating federal rights derived from inherently inter-state commerce from common law rights derived from inherently intra-state commerce. Normally, this might not be a problem, but with regard to the Internet, there exists an inherently inter-state means of communication.

[67]Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 417 (1916) (quoting Kidd v. Johnson, 100 U.S. 617, 619 (1879).

[68]See supra note 40.

[69]See Jonathan E. Moskin, Postcards from the Internet: Domain Name Infringement, N.Y.L.J. (March 10, 1997). "Rather than focus on traditional infringement principles, the most recent court decisions in Internet infringement cases have relied on a newly enacted federal statute that prohibits "dilution" or watering down of the distinctiveness of a mark. The statute is no panacea and suffers from many deficiencies. In the context of domain name infringements, one significant limitation is that, on its face, the statute requires the mark to be famous to merit protection from dilution. In at least some instances, however, the actual words of the statute have been no bar to its implementation." Id.

[70]See Gross, supra note 21, at 1080.

[71] See Gross, supra note 21, at 1080.

[72]See, e.g., Sweet Sixteen Co. v. Sweet "16" Shop, 15 F.2d 920 (8th Cir. 1926); American Radio Stores, Inc. v. American Radio & Television Stores Corp., 150 A. 180 (Del. Ch. 1930); Quality Courts United, Inc. v. Quality Courts, Inc., 140 F. Supp. 341 (D. Pa. 1956); Food Fair Stores, Inc. v. Lakeland Grocery Corp., 301 F.2d 156 (4th Cir. 1962), cert. denied, 371 U.S. 817 (1962); Burger King, Inc. v. Brewer, 244 F. Supp. 293 (W.D. Tenn. 1965)

[73]See generally Johnson and Post, supra note 42.