So what does this mean for marks used on the Internet? To our knowledge, there has been no court that has held that an Internet presence conveys nationwide geographic rights for a trademark. To the contrary, Internet sellers must still establish a zone of actual goodwill before they receive protection in a given geographic area. This is especially true if the service advertised online is tied to a physical location or if the Internet is being used as a trade channel to sell goods. For example, sufficient penetration of a market may be found by reviewing the number of sales made over the Internet to a certain geographic area. Additionally, courts may review the extensiveness and effectiveness of Internet advertising in a certain geographic area or the number of “hits” from a specific geographical area a website registers. Regardless of the quantity of evidence of Internet activity a trademark owner can prove in a geographic area, the market penetration must be significant enough to pose a real likelihood of confusion among consumers in that area.
This is why it is recommended that trademarks owners federally register their marks with the U.S. Patent & Trademark Office in a timely fashion. By doing so, a federally registered trademark is afforded a legal presumption of the exclusive right to use the mark nationwide. Talk to an experienced trademark lawyer today to determine where you mark is currently protectable under common law and where it may be at risk.