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A panel of the 6th U.S. Circuit Court of Appeals, noting a scarcity of law on the issue of trademark rights and Internet use, has advised a lower court to look to cases involving national advertising when it considers Internet issues in an injunction. Allard Enterprises Inc. v. Advanced Programming Resources, No. 99-4402, 6th Cir. Although the panel reinstated Allard Enterprise’s registration of the “APR” mark on May 8, the scope of injunctive relief remains to be decided by the U.S. District Court for the Southern District of Ohio. Allard Enterprises, which registered the “APR” mark in 1994, sued Advanced Programming Resources over its use of the mark. Both companies provide computer and technical support, but APR conducts its business solely in Ohio. The U.S. District Court for the Southern District of Ohio found for APR based on prior use and enjoined plaintiff from using the mark in its business. On Allard’s first appeal, the 6th Circuit found insufficient grounds for such a broad injunction and remanded for reconsideration of the geographic range of an injunction. The district court conducted a hearing, but also allowed APR’s counterclaim to cancel Allard’s registration of the mark, which the court granted. On the subsequent appeal, the 6th Circuit panel concluded that the district court erred in allowing the counterclaim because the panel had earlier remanded solely for reconsideration of the scope of the injunction. The panel also vacated the district court’s injunction against Allard’s use of the “APR” mark on the Internet, holding that while Advanced may have superior rights within Ohio, rights in other geographic locations are unclear. SOME INTERNET RIGHTS Additionally, the panel said, an injunction encompassing a particular area does not necessarily preclude use on the Internet, but that issue should be considered by the lower court after briefing. The panel stated, “due to the paucity of caselaw addressing concurrent trademark rights and Internet use, the district court may want to consider the role of national advertising by parties with concurrent trademark rights. Courts have held in some cases that, despite a concurrent user with a territory of exclusive use, an almost-national user should be permitted some form of national advertising. See 4 McCarthy � 26:46. In a more straightforward case in which a senior user holds a federal registration subject to limited concurrent rights of a junior user, permitting some form of Internet use seems necessary; otherwise, if two parties have concurrent rights to the same mark in distinct geographical areas, neither party would ever be allowed any use of the Internet.” But, the court added, “The present case, however, is complicated by the fact that Allard has obtained a federal registration and that APR’s initial implementation of its Web site appears to have occurred prior to Allard’s registration. We therefore leave it to the district court to evaluate the arguments and the unusual facts of this case in the first instance on remand.” Counsel for Allard: Gail L. Morrissey of Standley & Gilcrest in Dublin, Ohio. Counsel for APR: Joanne S. Peters and Timothy E. Miller of Isaac Brant Ledman & Teetor in Columbus, Ohio.

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