Common law concurrent trademark use is based on the judicially created Tea Rose–Rectanus doctrine. Although the Lanham Act has codified much of trademark law, courts today still apply some old common law concepts, including the Tea Rose–Rectanus doctrine. However, courts have not uniformly interpreted this doctrine, which has caused a circuit split concerning the doctrine’s good faith requirement. In Stone Creek, Inc. v. Omnia Italian Design, Inc., the Ninth Circuit weighed in on whether, under the Tea Rose–Rectanus doctrine, a junior user’s knowledge of a senior user’s prior use of a trademark completely destroys good faith or is a mere factor to consider in determining good faith. The court followed the lead of the Seventh Circuit and Eighth Circuit and went against the Fifth Circuit and Tenth Circuit when it held that a junior user’s prior knowledge of a senior user’s prior use defeats any claim of good faith for Tea Rose–Rectanus purposes. This note contends that in light of modern technology and the digital market retailers now find themselves in, the Ninth Circuit was correct in holding that knowledge of prior use destroys any claim of good faith because senior users merit greater protection in the internet era of today.
Dominic Riella, Note, Good Faith Concurrent Trademark Use: How the Ninth Circuit Took a Step in the Right Direction for Broad Protection in a Digital Time, 72 SMU L. Rev. 327 (2019)