Rebooting Trademarks for the Twenty-First Century

University of Louisville Law Review, Vol. 49, pp. 517, 2011

33 Pages Posted: 11 Feb 2013

See all articles by Doris Estelle Long

Doris Estelle Long

John Marshall Law School; Doris Long Consulting

Date Written: February 11, 2013


Trademarks have long suffered from an 'ugly stepsister' status in the realm of intellectual property. Quasi-market regulation tool, quasi-investment property; trademark's historical role as both consumer-information signifier and producer-investment asset has led to increasingly confusing dichotomous treatment under the Lanham Act. The potentially borderless markets of cyberspace, with their new marketing techniques and new competitive spaces, have only heightened this confusion. Stumbling attempts to extend protection for marks under the Lanham Act beyond traditional notions of trademark use and consumer confusion to encompass the investment protection side of trademarks, such as the development of federal dilution and anti-cybersquatting acts, only serve to twist trademark law into unnecessary and ultimately useless contortions. Instead of ignoring the dichotomous nature of trademarks, it is time to 'reboot' the Lanham Act to recognize that the dual role of trademarks cannot be adequately protected by a legal regime that ignores such dichotomies. In such new, competitive spaces on the Internet as domain names, keywords, pop-up advertisements, and metatags, traditional notions of trademark use and consumer confusion have little relevance. It is time to acknowledge the evolved nature of trademarks as both traditional reputation-based source designators and nontraditional information assets, and revise the law to reflect the different protection norms required for these two different types of 'marks.'

Keywords: trademarks, keywords, digital, reboot, goodwill, compulsory licensing

JEL Classification: 034, M37

Suggested Citation

Long, Doris Estelle, Rebooting Trademarks for the Twenty-First Century (February 11, 2013). University of Louisville Law Review, Vol. 49, pp. 517, 2011. Available at SSRN:

Doris Estelle Long (Contact Author)

John Marshall Law School ( email )

315 South Plymouth Court
Chicago, IL 60604
United States
312 360 2651 (Phone)


Doris Long Consulting ( email )

733 Chicago Avenue
Evanston, IL 60202
United States


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