Wednesday, October 28, 1998
Washingtonpost.com

You thought no one would see the meta tag identifying your competitor's trademark that you inserted into your HTML code. You thought it would give you a leg up on the competition by attracting the search engines while slipping past the customers' notice. But doing so may constitute clandestine trademark abuse.

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The body of law governing the Internet is developing slowly, but according to the 1997 ruling in Playboy Enterprises Inc. v. Calvin Designer Label, placing another company's registered trademark in your meta tags constitutes trademark infringement and unfair competition. So, watch your tags.

In this Q&A, Rochelle S. Blaustein, who practices patent, trademark, copyright and contract law with Roberts Brownell Abokhair LLC of Vienna, Va., gives a backgrounder on trademark law for companies with a presence on the Net.

Q: What is a trademark? What does it protect?

Blaustein: A trademark is any symbol, such as a word, company name, logo or slogan, that identifies a person or company as the source of origin for a product or service. Trademark is the general word associated with goods. Service marks, which are associated with services rather than goods, are a type of trademark. The law is equally applicable to both.

Trademarks protect "good will." Good will is that very important recognition in the mind of the consumer – the recognition of a particular quality and consistency of a product, for example. This is the intangible marketing asset that beckons consumers to return for repeated purchases.

Blaustein: A company or product name is a type of trademark – a symbol that indicates who stands behind a service or good – the "source of origin." The more distinctive a mark, the stronger it may become, and the greater presence it will bring to its owner. A distinctive trademark can enhance the marketing of a company as the consumer begins to associate certain goods or services with that mark, creating an even stronger presence.

There is a spectrum of distinctiveness from the generic, which is not protectable, such as Shredded Wheat (what else would you call it?) to arbitrary or fanciful, such as Apple for computers or Exxon for petroleum products. Many trademarks fall between the extremes and are suggestive of the product or service, such as GOLIATH for large pencils or CITIBANK for an urban banking institution.

The Internet has created a situation where a company name or trademark that has been in use in a remote geographic location may suddenly come against another's use on the Internet. If the mark is not used for related goods or services or not a famous mark, then there may be no legal liability. However, a Web company would be well advised to perform a trademark clearance search before choosing an appropriate name, to avoid another's presence. Given the global nature of the Web, it is often appropriate to check the availability of a name in the U.S. and other countries, particularly if the Web site is directed at consumers of another country, or if business is expected to be conducted with citizens of that country. This situation may arise due to a trademark used as a domain name or as part of content on the site.

Blaustein: Trademark law involving domain names, like other legal issues on the Internet, is evolving. Registration of a domain name as a trademark may be possible if it is associated with goods or services distributed over the Internet.

On the other hand, it is possible to register a domain name that is already a registered trademark, even if you aren't the mark's owner. InterNIC, the Herndon organization that maintains the domain name registry for the Internet, is not a policing authority and does not do trademark searches before registering a domain name. If a domain name clashes with another's registered trademark, it is the owner of that mark who must take action to protect his rights against domain names that conflict with his mark.

Blaustein: At this time, it is clear that someone using another's registered trademark as his domain name, for related goods or services, will be faced with a trademark-infringement issue, potentially resulting in loss of the domain name, costs of defending a suit and a money judgment. The most infamous cases of this were the line of suits brought against Toeppen, who had warehoused many famous marks and used a few. But it appears domain names that are simply registered and never actually used are not facing these same penalties under the law.

Blaustein: Federal, state and common law trademark searches performed while a name is being considered can eliminate the anguish (and loss of money) of a name change at a later date, as well as give peace of mind that another with superior rights is not lurking over the state border, ready to restrict your use or claim trademark infringement. Investing in the corporate identity at an early stage can aid marketing efforts and prevent a costly identity crisis in later years. But it's never too late to take the opportunity to transition gracefully to a name that can expand with your company.

Although federal registration is not required, obtaining clearance of a name through a trademark-availability search may be critical in avoiding others' claims of trademark infringement. Filing a federal trademark application after choosing an available name can also be a beneficial way of protecting the company, especially the important asset of good will associated with a name.

In addition to securing your rights at the national level, the federal registration places all others on notice of a claim to the name, potentially avoiding conflicts.

Blaustein: Many registered trademark owners obtain their trademark as a domain name at the time of filing the trademark application, even if it is not intended to be used as a domain until a later date. This prevents the hassle and cost of challenging someone who later obtains the domain name for that mark.

Use of the mark on the Web site should identify that the owner claims rights in that mark. The symbol ® is used when a trademark has been registered successfully with the U.S. Patent and Trademark Office. The symbol ™ can be used when a trademark is being claimed by use but has not been registered with the Trademark Office.

Another activity to consider is a type of "trademark watch," done by periodically searching the Web for uses of the trademark. Even if the trademark is not another's domain name, that mark may be used on a Web site. If it is used in connection with related goods or services, then it is appropriate to inform the Web site owner of the existence of a registration on that mark and possibly to proceed to an infringement suit, depending upon the circumstances.

It should be remembered that the Web is global, and in certain circumstances, such as dealing with the consumers of another country, non-U.S. law may be applicable. As the law of the Internet evolves and countries attempt to develop treaties or laws that are consistent with each other, it is likely that more certainty concerning "foreign" issues will develop. That is not expected to happen, however, for quite some time.