Southern Illinois Storm Shelters v. 4SEMO.COM, Incorporated

In this case, the Seventh Circuit panel refused to apply the equitable six-factor test adopted by the Second, Third, and Ninth Circuits to determine common law trademark ownership rights as between a manufacturer and the manufacturer’s distributor, even though a prior Seventh Circuit panel had previously recognized such test. This raises the following question: I. Did the Seventh Circuit panel’s rejection of the equitable multi-factor test proposed by Professor McCarthy to determine common law trademark ownership as between a manufacturer and its distributor: (1) conflict with the well-justified reasoning of sister circuits that have adopted the test, (2) conflict with prior Seventh Circuit precedent, and (3) create an unjustifiable windfall to 4SEMO (the distributor) that will likely force SISS (the manufacturer) out of business? Moreover, the Seventh Circuit panel upheld the Southern District of Illinois’ objective determination that a junior user’s (a manufacturer’s) common law trademark use outside a senior user’s (a distributor’s) common law trademark territory infringed the senior user’s common law trademark rights, based upon the junior user’s prior knowledge of the trademark, while disregarding the equitable totality of the circumstances as considered by the Second, Fifth, Eighth, and Tenth Circuits. This raises the following question: