Trade­marks have made plenty of head­lines this year. Sarah and Bristol Palin moved to obtain trade­mark pro­tec­tion for their names, Apple sued Amazon for trade­mark infringe­ment over use of the term “App Store” and a com­pany with ties to Charlie Sheen has filed for trade­mark reg­is­tra­tions on 22 of the actor’s catch­phrases. Susan Bar­bieri Mont­gomery, exec­u­tive pro­fessor of law and busi­ness at North­eastern, breaks down the role of trade­marks and how the Internet is changing the game.

What is involved for an indi­vidual or com­pany to obtain a trade­mark for a word, catch­phrase, symbol, and so forth?

Selecting and securing an effec­tive brand is a dynamic mix of mar­keting and legal mea­sures. The goal is to own a mark that is both pow­erful in the mar­ket­place and pro­tectable against use by others. It also must be cleared for use and pro­tec­tion. The first clear­ance step is finding out if the word or phrase is avail­able by searching online or checking with the U.S. Trade­mark and Patent Office. The second step is deter­mining whether it meets the cri­teria for pro­tec­tion as a trade­mark. A trade­mark must be capable of dif­fer­en­ti­ating your product from the com­pe­ti­tion. Some words may not be eli­gible if they are used as a common name or descrip­tion — for example, using the words “Appli­ca­tions Online” as a brand for an online ser­vice that pro­vides smart­phone appli­ca­tions. The third step is using and pos­sibly applying to reg­ister your mark. In the United States, use in com­merce is required.

What is the role of trademarks?

An effec­tive mark is a pow­erful symbol of rep­u­ta­tion and source. The value of a mark can be mea­sured by its exclu­sivity and asso­ci­ated brand loy­alty, rep­u­ta­tion and rev­enue gen­er­a­tion. Trade­marks are dif­ferent legally from patents and copy­rights, which are treated as prop­erty. The pri­mary pur­pose of trade­mark law is to pre­vent unfair com­pe­ti­tion and pro­tect con­sumers from being con­fused or misled by someone using the rep­u­ta­tion of another’s product to his or her ben­efit. A trade­mark owner can pre­vent others from using the mark, or a sim­ilar mark, if its use causes con­sumer con­fu­sion about the nature, quality or source of the goods or the ser­vices sold in con­nec­tion with the trade­mark. For example, Red Bull has suc­cess­fully moved to pre­vent bars from pro­moting drinks as being made with Red Bull when they were not actu­ally made with gen­uine Red Bull.

What effect has the dig­ital age had on trends related to trademarks?

In the online world, a mark is seen sooner and more often, and expo­sure is not lim­ited by geo­graphic or national mar­kets. This has advan­tages and dis­ad­van­tages for trade­mark owners. The Internet makes it easier to dis­cover if a mark is taken, and social media is useful for testing the mes­sage and poten­tial market response to a brand. How­ever, the ease and low-​​cost of world­wide expo­sure has its down­sides. Since own­er­ship of a mark in the United States does not secure own­er­ship else­where, a mark must be cleared and pro­tected country by country — and most other coun­tries are based on first to file, not first to use. If your trade­mark becomes well-​​known and valu­able very quickly, it can also be bur­den­some to watch for and pre­vent others from using or mis­using your mark.