A modest proposal--add <trademark> tag to solve domain name problem

[Jonathan Ezor <jezor@newmedialaw.com>]

>From my unpublished article "The Mark of a Commercial Web Site":

	To solve the trademark/domain name standoff, I propose that a new
standardized tag be added to HTML called <trademark>, which would be a
non-displaying tag (that is, any text within the tag would not show up
on the screen to the reader of the Web site).  The <trademark> and
corresponding </trademark> tags could be placed around a list of
trademarks held by the owner of the site, which could include company
names, product names or slogans.  It would be the HTML equivalent of
(tm) or (R).  As the tag comes into common use, it can be added as a
search option to the most popular Web index sites, so that anyone can
search specifically for a well-known trademark to find information about
that company or its products, whether or not the company has registered
its marks as domain names for the site.  

	For example, imagine that every Microsoft Web site contained the
following tag somewhere in the HTML:

<trademark> Microsoft </trademark>

Every search engine which read such a page would store these words as
part of the trademark information for the site.  Whenever a user wanted
to find Microsoft’s sites, the user could search for “<trademark>
Microsoft </trademark>“, and every one of these pages would show up. 
However, none of the many third-party sites discussing Microsoft
products should be found by the search.

	Of course, from a technical standpoint, nothing would stop anyone else
from adding the <trademark> Microsoft </trademark> tag to their Web
site, but such a tag would differ from the use of “Microsoft” in a
domain name.  By placing the word “Microsoft” in the trademark tag, that
site’s owner would be stating that it considered “Microsoft” to be its
own trademark.  That type of claim should fall squarely within the
established principles of trademark law, and could be subject to direct
challenge by Microsoft, so there would be no need to reconcile policy
and statute the way that parties must do now regarding trademark and
domain names.

	The notion of a non-displaying HTML tag used to convey additional
information about a Web site is not new.  The <meta> tag, a catch-all of
non-printing HTML information, is already standard to HTML and used to
identify certain aspects of the site, as well as to be a hook for
indexing programs to find the site and catalog it in specific ways.  (In
one common example, many non-pornographic sites may still add words like
“sex” and “nude” to the <meta> tag of the home page of the site, to try
and entice Web users who search under these common words.)  The
difference between the <trademark> tag and a tag like <meta> is that
<trademark> already has a specific legal and business meaning, one which
is as relevant to the Web as it is to non-electronic commerce.  

	The <trademark> tag would provide an explicit way for companies on the
Web to use their marks to help users locate their information in
easily-searchable ways, even if it was listed via some other party’s
domain name (such as within an electronic mall or a subdirectory on
someone else’s Web server), without burdensome technology or significant
extra cost.  Of course, a trademark owner would still be free and
encouraged to advertise its site and products using other methods, to
increase the likelihood that a user will be able to easily find its
information no matter how the user searches for it.

	Implementing a <trademark> tag in the HTML specification could occur in
a number of ways.  While certain tags have begun as features of browser
programs such as those from Microsoft and Netscape and later been
officially approved, the official method is to propose a change to the
HTML working group of the Internet Engineering Task Force, which will
study the change and decide whether to adopt it as part of the complete
HTML standard.  Among the IETF’s guidelines for such a proposal is a
requirement that it 

“is globally cost-effective without being locally prohibitive (i.e. the
sum of all the effort of deploying this solution is less than the cost
of dealing with the probelem with existing technology, and yet no one
party bears too much of the burden.  For example, if you require every
information provider to do something, it had better be minimal.)”

In this instance, by firmly grounding site identification in existing
trademark law, and making it clear when parties are claiming specific
trademark rights in words (as opposed to simply choosing a domain name
for whimsy, satire or speculation purposes), a <trademark> tag would
make enforcement of trademark rights more efficient, and eliminate some
of the confusion faced by both InterNIC and trademark holders.  And
because it is a non-displaying tag, the <trademark> tag could be easily
adopted by the major and minor browsers which may face problems with
some new tags which create unusual text or graphic formatting
abilities.  Ultimately, clarifying trademark protection and usage and
enabling the efficient use of trademarks to find Web resources will go a
long way toward making Web-based commerce at least equal to, and
potentially better than, non-electronic commerce.

Copyright 1996 Jonathan I. Ezor, Davis & Gilbert.  All rights reserved.

Jonathan I. Ezor is an attorney with Davis & Gilbert in New York City,
practicing new media and computer law, focusing on the advertising
industry.  Mr. Ezor can be reached at jezor@newmedialaw.com.

-- 
Jonathan I. Ezor
New Media Attorney, Davis & Gilbert, 1740 Broadway, New York, NY 10019
Tel: 212-468-4989   Fax: 212-468-4888   E-mail: jezor@newmedialaw.com