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3Qs: Trademarks in the World Wide Web era

David Leifer Photography

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.