Federal trademark registration confers a wide variety of benefits to trademark owners, including the right to recover actual damages or an infringer’s profits in an infringement action. The Lanham Act restricts the ability for trademark owners to recover these damages, however, if they do not provide either public notice of their mark or if the infringer does not have actual notice of the mark’s federal registration. These requirements have remained relatively unchanged since the Lanham Act’s enactment in 1946 and, to date, have received little attention. As these statutory requirements receive little attention, trademark infringement actions rely upon a private scheme of notice through cease-and-desist letters, which creates little incentive for trademark owners to provide notice to the public that their marks are indeed authentic.
After the Court’s decision in Romag Fasteners removed a willfulness requirement to the disgorgement remedy, however, these notice requirements are beginning to receive increased attention as one of the only statutory bars to monetary recovery. Parties asserting arguments based on these notice requirements are left with scant doctrine and uneven applications that often reward willful blindness over prudent trademark selection.
This Note explores virtual marking as a solution to revive trademark notice requirements, serve as a backbone to how courts can calculate damages awards, and reincorporate the public into the trademark notice scheme. The America Invents Act successfully incorporated virtual marking into the patent notice scheme, bringing a similar statutory scheme into the twenty-first century. After exploring the statutory and historical bases for trademark notice requirements, this Note explores how virtual marking may be even more useful in the trademark context and illustrates a framework for incorporating this modern scheme.